IPLaw Daily Update

IPLaw Daily Update

Legal developments to watch for in 2015 – With a new year underway, Penn Law asked several of its faculty members to look ahead and predict some of the key legal issues that will be discussed and debated in the upcoming year. From executive authority to intellectual property, here are just a few of the legal developments to watch for in 2015.
USPTO issues final Patent Term Adjustment rules under Novartis – The USPTO has published final Patent Term Adjustment (PTA) rules addressing the treatment of Requests for Continued Examination (RCEs) under the Federal Circuit decision in Novartis v. Lee. The final rules create a new type of deduction for “Applicant delay” that will apply to applications in which an RCE is filed on or after March 10, 2015.
Common issues of trademark infringement in e-commerce and enforcement – According to the data of the Chinese e-Commerce Research Center, by the end of 2012, the trading volumes of the e-commerce market in China had reached 7.85 trillion. In 2013, it was 10.5 trillion and is expected to reach 13.4 trillion in 2014. From the industry distribution of e-commerce websites, the top ten industries are: apparel, textile, agriculture and farming, digital household appliances, machinery and equipment, chemicals and plastics, food and wine, construction materials, hardware and tools, medical treatment and medicine. Along with this phenomenon, the protection of intellectual property rights in the online sphere is also facing a whole new series of challenges. This article will focus on the discussion of issues of trademark infringement in e-commerce.
Copyright judgments in 2015: what’s in the pipeline from the CJEU (and will we be able to understand them?) – 2015 will be another busy copyright year for the CJEU, starting with Case C-30/14 Ryanair (copyright/database rights) this Thursday, followed a week later on 22 January by C-419/13 Art & Allposters (exhaustion of rights) and C-441/13 Hejduk (online jurisdictional issues). Later this year, we expect to see rulings in C-279/13 C More Entertainment (hyperlinks) [here] and 3 cases on the scope of the private copying exception: C-463/12Copydan [here], C-572/13 Hewlett-Packard [here] and C-470/14 Egeda [here].
Aereo and FilmOn: Technology’s Latest Copyright War and Why Aereo Should Survive – TV as we know it is changing, but the courts and Congress again face the issue of how copyright law should adapt. As cable providers and broadcast networks battle over retransmission fees and the cost of cable TV increases, Internet TV becomes more popular. Cable providers try to compete in the Internet TV market by offering live and on-demand programming accessible over the Internet but struggle to compete with the variety of online video delivery Some companies, such as Sony, Google, and Amazon, considered plans for Internet TV that would be similar to cable TV. However, two companies, Aereo and FilmOn, began offering broadcast TV over the Internet in 2012. As viewers abandon cable TV for Internet programming, broadcast companies must fight to find profits through existing copyright law.

January 14, 2015

Permobil Inc. v. Pride Mobility Products Corporation, Final Written Decision IPR2013-00407- In its Final Written Decision, the Board determined that Petitioner showed by a preponderance of the evidence that all of the challenged claims of the ’598 patent are unpatentable. The ’598 patent relates to active anti-tip systems for powered vehicles, such as powered wheelchairs. Takeaway: For secondary considerations to be persuasive evidence of nonobviousness, the patent owner needs to show a nexus to the claims.
A sensible response: Do not rush to pass a bill – The new Congress will either upgrade or degrade America’s patent rights system, our primary engine of economic growth and job creation, when it resumes efforts at “patent reform.” Although some manufacturing that was off-shored is returning, our economy remains an innovation-driven one. Patents incentivize the repeated investments needed for R & D, invention, and commercialization of new products by assuring a reasonable return on these inherently risky investments. If these incentives fade, so will the investments, for money managers have many other options. What creates the incentives in the first place is the value of patents, but their market value depends on the owner’s ability to get courts to enforce them. Patents cannot enforce themselves.
Patentability of Software Post-Alice: How Do Courts Determine Whether an Idea is Abstract? – Since the Supreme Court’s decision in Alice Corp. v. CLS Bank Int’l on patentable subject matter, courts have tried to follow the prescribed framework. Under Alice, patent claims are invalid if directed to “abstract ideas” and if the ordered combination of those abstract ideas does not amount to an “inventive concept” or is not “meaningfully limited” in scope to prevent sweeping preemption of the field of invention. But what does it mean to be an “abstract idea” or an “inventive concept”? Six months after the Supreme Court’s decision in Alice, these legal constructs are far from clear.
Supreme Court seeks guidance on Google-Oracle case – The US Supreme Court asked the Obama administration for advice on Google Inc.’s appeal in its copyright clash with Oracle Corp. over the Android smartphone operating system. Google is accused of copying Oracle’s Java programming platform to develop Android. Google is asking the Supreme Court to review a ruling that revived Oracle’s claims. Oracle, the largest database-software maker, has sought more than $1 billion in damages. Oracle claims Google used Java code without paying because it was in a rush to create Android, now the world’s most popular smartphone platform. The Supreme Court directed its requests to US Solicitor General Donald Verrilli, the administration’s top courtroom advocate.
Rock band The Slants wants to reclaim slur for trademark – Asian-American rock band The Slants argued in court on Friday that its name is a healthy reappropriation of a term usually considered a slur and that the band should be granted a trademark despite government objections. The case could have implications for a higher-profile fight over whether the Washington Redskins team in the National Football League should lose its trademarks.

January 13, 2015

Federal Circuit Parses Patent in Googacle Spin-off – The U.S. Supreme Court is poised to decideFriday whether to review a copyright dispute between Oracle Corp. and Google Inc. that’s been dubbed the World Series of IP cases. But on Thursday the companies went before the U.S. Court of Appeals for the Federal Circuit to fight over a related claim that didn’t make the playoffs. Oracle’s original case against Google, made famous by a 2012 trial before U.S. District Judge William Alsup, included a patent claim over software for speeding up execution of source code on a virtual machine. But that patent was dropped from the trial when Google persuaded the U.S. Patent and Trademark Office to reexamine it. The Patent Trial and Appeal Board ultimately agreed with Google that a 1993 computer science article had anticipated the patent.
Collateral Estoppel In Claim Construction – Addressing the issue of collateral estoppel as it relates to an earlier claim construction, the U.S. Court of Appeals for the Federal Circuit affirmed-in-part and reversed-in-part a district court’s finding that a party was collaterally estopped from seeking a construction of a claim limitation that was different from another court’s construction of that same term in a previous case. e.Digital Corp. v. Futurewei Technologies, Inc., Case No. 14-1019 (Fed. Cir., Nov. 19, 2014) (Moore, J.).
Non Practicing Entities in Europe – Non practicing entities (NPEs) are a familiar part of the IP landscape in Europe, just as they are in the US. However, NPE activity has historically been lower in Europe. This article analyzes the present situation in Europe compared to the US. In addition, the article analyzes how NPE activity might develop in Europe with the anticipated arrival of the Unified Patents Court (UPC).
A Software Patent Setback: Alice v. CLS Bank – When the United States Court of Appeals for the Federal Circuit decided CLS Bank v. Alice Corporation, all the important questions that we thought might be answered remained completely and totally unanswered. There were only 10 judges who sat on the en banc tribunal and no more than 5 judges signed on to any one opinion. The only thing we learned was this — the Federal Circuit issued an extraordinarily brief per curiamdecision, which stated: Upon consideration en banc, a majority of the court affirms the district court’s holding that the asserted method and computer-readable media claims are not directed to eligible subject matter under 35 U.S.C. § 101. An equally divided court affirms the district court’s holding that the asserted system claims are not directed to eligible subject matter under that statute.
USPTO Slams Inventor’s High Court 1st-To-File Challenge – The U.S. Patent and Trademark Office has fired back against an inventor’s bid to have the U.S. Supreme Court revive his suit alleging it was unconstitutional for the U.S. to change to a first-to-file patent system, saying the Federal Circuit’s dismissal of the case did not conflict with any circuit court precedent. In a Dec. 31 brief filed in opposition to a September certiorari petition filed by inventor Mark Stadnyk and his motorcycle windshield company, MadStad Engineering Inc., the USPTO said that the Federal Circuit’s July decision affirming the dismissal of Stadnyk’s suit challenging the America Invents Act’s first-to-file provisions was on target.
January 12, 2015

An Opportunity for Clarity in DesignPatent Damages – On December 4, 2014, Samsung and Apple clashed at the U.S. Court of Appeals for the Federal Circuit in a case with nearly a billion dollars at stake. Roughly $400 million dollars relates to three design patents owned by Apple. In this article article, the author argues that the District Court erred in allowing Apple to extract roughly $400 million dollars—Samsung’s entire profits on the infringing phones—based on design patents covering isolated aspects of the accused phones: a shiny black screen, a rectangle with rounded corners and a screen with a grid of square icons.
Federal Circuit to Consider Whether Delay in Filing Suit Can Bar Damages or Injunctive Relief in … – The Federal Circuit has granted an en banc rehearing in SCA Hygiene Products v. First Quality Baby Products to revisit whether and to what extent a patent owner’s unreasonable delay in filing an infringement suit can bar recovery of money damages and/or injunctive relief. The en banc rehearing comes in the wake of the Supreme Court’s decision last term in Petrella v. Metro-Goldwyn Mayer, Inc., which held that the equitable doctrine of laches did not bar a copyright owner from recovering damages for acts of infringement that occurred within the statute of limitations for copyright actions. The Federal Circuit will now consider whether to extend the reasoning of Petrella to patent cases, potentially making it easier for plaintiffs who have delayed bringing suit to claim damages but possibly making it harder for such dilatory plaintiffs to obtain injunctive relief. The court has invited amici curiae to participate in the briefing process. Amicus briefs are due beginning in late February.
Fed. Circ. Told PTAB Wrongly Nixed ‘Virtual Camera’Patent – Gamecaster Inc. told the Federal Circuit on Monday the PTAB had wrongly invalidated its “virtual camera” patent, saying the prior art cited in rival DreamWorks Animation SKG Inc.’s challenge did not have enough in common with its patent to make it invalid as obvious. PTAB had mad a number of mistaken findings about the prior art it had ruled had made Gamecaster’s patent-in-suit – U.S. Patent Number 7,403,220, covering a virtual camera system – obvious, reading too much into a “thin” journal article and wrongly combining the system described in that article with ideas from another patent.
The government as trademark troll: Union County (NJ) hit with $40K bill in First Amendment case – In May, Union County (N.J.) tried to get a critic of the County government to stop using the County seal on her blog. The trouble was that the County claimed that the blogger (Tina Renna) violated a registered trademark, and U.S. trademark law expressly prevents local government seals from being registered trademarks; and, more broadly, neither the federal trademark law nor the New Jersey criminal law that the County cited actually applied here. So Renna won — and now a Magistrate Judge has recommended that the County be ordered to pay Renna $39,500 in legal fees and $500 in court costs. A winning party in trademark cases can generally recover attorney fees only if the case is “exceptional,” but the magistrate concluded that this was indeed an exceptional case.
Content Extraction and Transmission, LLC vs. Wells Fargo Bank (Fed. Cir. 2014) – Patentee Content Extraction and Transmission (CET) owns U.S. Patent Nos. 5,258,855 (the ‘855 patent),5,369,508 (the ‘508 patent), 5,625,465 (the ‘465 patent), and 5,768,416 (the ‘416 patent). The ‘508, ‘465, and ‘416 patents are continuations of the ‘855 patent, and in the words of the Federal Circuit, “share substantially the same specification.” CET filed infringement suits against Wells Fargo Bank, PNC Financial Services Group, Inc. (PNC) and various third parties in the United States District Court for the District of New Jersey. Diebold, Inc., supplier of the allegedly infringing equipment used by the defendants, joined the action as a cross-appellant. Diebold contended that CET engaged in tortious interference and violations of the RICO act due CET’s infringement claims being baseless.

January 8, 2015

The Federal Circuit and Judicial Transparency – The variety of statistics that the Federal Circuit has publicly released has shrunk over the years. The court used to provide data on the dispositions of patent infringement cases, for example; that data is no longer provided by the court. Much greater than problems with the court’s statistical data, however, is the lack of transparency in connection with the court’s decisions themselves. This is not to say that there is no information: the court deserves credit for deciding, several years ago, to post its opinions on the Federal Circuit webpage. These opinions are published at http://www.cafc.uscourts.gov/opinions-orders/ throughout the day. Since around the middle of 2007, the material released at this location has included summary affirmances under Rule 36, and for the past few years “selected” orders have been published there as well. Unfortunately, no criteria for which orders are “selected” for publication on the website are provided, and extremely significant and important orders are sometimes not released there.
Good-Faith Belief of Invalidity Defense to Patent Infringement – The U.S. Court of Appeals for the Federal Circuit previously established that a good-faith belief of non-infringement is a defense against induced infringement. Recently, the Federal Circuit held that a good-faith belief that the asserted patent is invalid is a defense against induced infringement in Commil USA LLC v. Cisco Systems, 720 F.3d 1361 (Fed. Cir. 2013). During the upcoming U.S. Supreme Court term, the court is set to review the Federal Circuit’s recent decision that a good-faith belief of invalidity is a defense against induced infringement. If the Supreme Court upholds the Federal Circuit’s Commil decision, a defendant having a good-faith belief that an asserted patent is invalid may be able to avoid induced infringement liability.
Federal Circuit affirms ITC final determination of no violation of Section 337 in Creative Kingdoms … – On December 19, 2014, the U.S. Court of Appeals for the Federal Circuit issued a non-precedential decision affirming the International Trade Commission’s (the “Commission”) final determination of no violation of Section 337 in Creative Kingdoms, LLC et al. v. Int’l Trade Comm’n (2014-1072). This was an appeal by Complainants Creative Kingdoms, LLC and New Kingdoms, LLC (collectively, “CK”) in connection withCertain Video Game Systems and Wireless Controllers and Components Thereof (Inv. No. 337-TA-770).
Three patent issues to watch in 2015- 2014 was a busy year in patent law, and it wasn’t all good news for patent holders. The Supreme Court made 35 USC § 101 a significant hurdle to patenting inventions across a broad swath of technologies (see my post on the Alice decision here), gave more teeth the definiteness standard of 35 USC § 112 (see my post on the Nautilus decision here) and did not resolve the divided infringement problem (see my post on the Akamai decision here). For its part, the Federal Circuit expanded the reach of the doctrine of obviousnesss-type double patenting, invalidated antibody claims defined functionally, scrutinized evidence ofunexpected results, and questioned whether post-filing date evidence can be used to support non-obviousness. Now that all that is behind us, here are the biggest issues that I expect to be watching in 2015.
Does the Broadest Reasonable Interpretation Standard Make Sense?- Two of the earliest challenges to patents under the new post grant proceedings established by the America Invents Act (AIA) are now on appeal to the Court of the Appeals for the Federal Circuit and both appeals are taking direct aim at the US Patent and Trademark Office’s decision to adopt a controversial standard for claim construction – the so-called “Broadest Reasonable Interpretation” standard – to govern all of the new AIA proceedings. Versata v. SAPconcerns the very first “covered business method” (CBM) review proceeding (CBM2012-00001) conducted by the USPTO and is on appeal by the Patent Owner, Versata, of the Patent Trial and Appeal Board (PTAB) decision to invalidate certain challenged claims. Cuozzo v. Garmin concerns the first inter partes review (IPR) proceeding and likewise is on appeal from a PTAB decision finding Couzzo’s claims invalid.

January 7, 2015

Stays of Litigation Warranted Even When the CBM Review Does Not Address All Asserted Claims …- Addressing the denial of a stay pending the covered business method (CBM) review of some, but not all, asserted claims in a district court action, the U.S. Court of Appeals for the Federal Circuit concluded that it was an abuse of discretion to not stay the entire case. In its decision, the Federal Circuit embarked on its own analysis of the four factor test for granting a stay pending CBM review and concluded that each factor strongly favored a stay. Versata Software, Inc. v. Callidus Software, Inc., Case No. 14-1468 (Fed. Cir., Nov. 20, 2014) (Chen, J.).
Obviousness Must Be Supported by Analysis and Factual Findings – Addressing the need for factual findings to support a finding of obviousness, the U.S. Court of Appeals for the Federal Circuit vacated the lower court’s decision invalidating a patent, determining that the requisite findings to support an invalidity determination of obviousness were not made. Malico Inc. v. Cooler Master USA Inc., Case No. 13-1680 (Fed. Cir., Nov. 17, 2014) (Chen, J.) (non-precedential).
Nothin’ from Nothin’ Leaves Nothin’: Axiom Worldwide Inc. v. Excite Medical Corp. et al. – The U.S. Court of Appeals for the Eleventh Circuit affirmed a district court’s $1.32 million judgment in favor of a medical device maker, ruling that it never owned the trademarks in question and therefore could not have passed the rights in the trademarks to a successor. Axiom Worldwide Inc. v. Excite Medical Corp. et al., Case No. 13-13900 (11th Cir., Nov. 17, 2014) (Rosenbaum, J.)
‘Ordinary Skill in the Art’ at Patent Jury Trials – Jurors are often instructed to become time travelers and reconstruct what may have happened “back when.” The courts have instructed that for jurors facing issues of obviousness in a patent trial, the decision regarding whether or not an alleged invention was new and non-obvious at the time of the invention should be predicated on the choices that a person of ordinary skill in the art (POSA) would have made in the past. Not surprisingly, jurors are often skeptical about the relevance and credibility of this hypothetical exercise. As a result, in preparing for trial, the patent trial lawyer and her expert face the challenge of adding meat—in the form of credible and reality based details—on the bones of this amorphous skeleton by showing what would have been the thoughts and choices of this fictitious mind.
Sandoz Was Disinvited To The Patent Dance: The Federal Circuit’s First Interpretation Of The … – Since the 1984 enactment of the Drug Price Competition and Patent Term Restoration Act, Hatch-Waxman litigation has dominated the sphere of life-sciences patent litigation. The battle between proprietary and generic interests, which have often intertwined over the last thirty years, has changed the landscape of pharmaceutical small molecules. And so it is with the Biologics Price Competition and Innovation Act of 2009 (“BPCIA”). Industry observers expect the litigation of biologics and so-called biosimilars to be significant and to reshape the sale of biologics, just as the Hatch-Waxman Act did for small-molecule pharmaceuticals. Thus far, however, every attempt to judicially define the contours of the BPCIA has failed. On December 5, 2014, the U.S. Court of Appeals for the Federal Circuit issued its first decision on a case involving the BPCIA, upholding the dismissal of a declaratory judgment action that Sandoz, the generic arm of Novartis, filed with respect to two Amgen-licensed patents covering Amgen’s blockbuster biologic, Enbrel®. The court of appeals agreed with the district court that there was no case or controversy between the parties. In so doing, the court of appeals expressly declined to hold that a failure to file an FDA approval application necessarily results in lack of declaratory judgment jurisdiction.

January 6, 2015

Halo v. Pulse: Escaping Willfulness with Ex Post Reasoning – Halo has petitioned the Federal Circuit to rehear its electronics patent case against Pulse with two questions presented: 1. Willfulness: Whether an infringer who subjectively knew pre-suit that it was infringing a valid patent (after being given notice of the patent, and failing to design around, seek a license, or stop infringing) can use an unsuccessful defense developed post-suit as a per se bar to liability for pre-suit willful infringement, despite the flexible text of 35 U.S.C. § 284. 2. Sale/Offer for Sale: Whether a requirements contract for a patented product that is negotiated and executed in the U.S., subject to California law, and includes binding pricing and quantity terms constitutes a “sale” and “offer for sale” under 35 U.S.C. § 271(a).
“Nonce” Words and Means-Plus-Function Analysis – Where the word “means” is not actually recited in a patent claim, case law provides a strong presumption that the claim is not a means-plus-function claim under § 112(f). If it is shown, however, that the claim uses language or a word—a “nonce” word—that substitutes for the word “means,” the presumption can be rebutted. Addressing whether the presumption was rebutted by use of the words “module for . . . ,” the U.S. Court of Appeals for the Federal Circuit concluded that, in the context of the asserted patent, it was not. Williamson v. Citrix Online, LLC, Case No. 13-1130 (Fed. Cir., Nov. 5, 2014) (Linn, J.) (Reyna, J., dissenting).
Federal Circuit Court of Appeals Delivers Another Decision on Patentability of Myriad Patents – In Univ. of Utah Res. Foundation et al. v. Ambry Genetics Corp., No. 2014-1361 (Fed. Cir. Dec. 17, 2014), the Federal Circuit once again has weighed in on the patent eligibility of Myriad Genetics, Inc.’s patents related to BRCA1 and BRCA2 genes. In this case, a panel of three judges of the Federal Circuit considered claims of patents that were not previously before this court and were also not considered by the Supreme Court in Molecular Pathology v. Myriad, 133 S. Ct. 2107 (2013) (“Myriad”).
Patent and IP Wishes for 2015 – Alice v. CLS Bank dominates the wishes we received. But we did receive a wide range of wishes, from patent eligibility reform, to demand letter reform, to greater transparency at the USPTO, to the creation of a large scale, viable patent licensing marketplace, to greater cybersecurity awareness in the wake of the North Korea hack of Sony.
The Tech Court: Federal appeals court at center of epic patent battles – For Silicon Valley tech giants, biotech companies or small startups cooking up a new gadget, a small cadre of federal judges thousands of miles away has become almost as important in recent years as those nearby venture capitalists on Sand Hill Road. Once virtually unknown outside the sleepy world of patent lawyers, the Washington, D.C.-based U.S. Federal Circuit Court of Appeals has gathered unprecedented influence in the valley and beyond — often having the last word in increasingly common courtroom battles over who controls some of the nation’s most valuable technologies. The court’s profile is on the brink of a significant expansion as it weighs perhaps the signature patent showdown of recent history, the fight between Apple and Samsung over the rights to smartphone and tablet technology.

January 5, 2015

FLIR Systems, Inc. v. Leak Surveys, Inc.: Order Regarding Institution of Inter Partes Review … – The Board held a conference call to discuss scheduling in this IPR and two related IPRs. In this IPR, by agreement of the parties, Patent Owner is submitting its preliminary response in two parts. Patent Owner submitted the first part a few days before the conference call. In its Order, the Board addressed several arguments raised by Patent Owner in the first part of the preliminary response. Takeaway: A decision to institute an IPR is not a “final written decision” that estops a Petitioner from seeking IPR on additional grounds.
Unreasonable Prejudicial Delay in Filing Patent Infringement Suits: Why the Federal Circuit Should… – On December 30, 2014, the Federal Circuit granted en banc review in a case (SCA Hyiene), to consider whether to overrule the 1992 A.C. Aukerman decision, which upheld the defense of laches (unreasonable, prejudicial delay) for patent infringement damage claims, in light of the Supreme Court’s 2014 Petrelladecision, which held that laches did not apply to claims for damages for acts of copyright infringement occurring within the Copyright Act’s three year statute of limitations. Neither the Federal Circuit nor the Supreme Court should alter Aukerman. The article here articulates some of those reasons.
First Amendment Protects Use of Third-Party’sTrademark in Video Game – Confirming that video games, including customizable multi-player games, qualify as expressive works entitled to First Amendment protection, a California district court granted summary judgment in favor of video game publisher on trademark infringement claims brought by the owner of a trademarked military patch design, which appears in the video game publisher’s military combat themed video game. Mil-Spec Monkey, Inc. v. Activision Blizzard, Inc. et al. Case No. 3:14-cv-02361 (N.D. CA, Nov. 24, 2014) (Seeborg, J.)
Nothin’ from Nothin’ Leaves Nothin’: Axiom Worldwide Inc. v. Excite Medical Corp. et al. – The U.S. Court of Appeals for the Eleventh Circuit affirmed a district court’s $1.32 million judgment in favor of a medical device maker, ruling that it never owned the trademarks in question and therefore could not have passed the rights in the trademarks to a successor. Axiom Worldwide Inc. v. Excite Medical Corp. et al., Case No. 13-13900 (11th Cir., Nov. 17, 2014) (Rosenbaum, J.)
Sandoz Was Disinvited To The Patent Dance: TheFederal Circuit’s First Interpretation Of The … – Since the 1984 enactment of the Drug Price Competition and Patent Term Restoration Act, Hatch-Waxman litigation has dominated the sphere of life-sciences patent litigation. The battle between proprietary and generic interests, which have often intertwined over the last thirty years, has changed the landscape of pharmaceutical small molecules. And so it is with the Biologics Price Competition and Innovation Act of 2009 (“BPCIA”). Industry observers expect the litigation of biologics and so-called biosimilars to be significant and to reshape the sale of biologics, just as the Hatch-Waxman Act did for small-molecule pharmaceuticals. Thus far, however, every attempt to judicially define the contours of the BPCIA has failed.

Are Courts the New Death Squads for Software Patents? Not So Fast – In 2013, the former Chief Judge of the U.S. Court of Appeals for the Federal Circuit famously proclaimed that the Patent Trial and Appeal Board was becoming a “death squad” for issued patents. Today, patent owners continue to face an uphill battle in the PTAB. That said, few can argue that owners of software patents have fared any better in district courts following the Supreme Court’s recent decisions on patent eligible subject matter which have culminated in the Court’s opinion in Alice v. CLS Bank
2014 Interim Guidance on Patent Subject Matter Eligibility Provide Limited Direction for Software Implemented Inventions – This guidance formally joins the requirements of Mayo and Alice Corp. used by examiners to determine whether patent claims include subject matter that is eligible for patent protection under 35 U.S.C. §101. For those innovations that relate to laws of nature, natural phenomenon and abstract ideas, the guidance provides no bright line test regarding exactly what is required to gain patent eligible status. However, the guidance is clearly only the beginning in the U.S. Patent and Trademark’s Office attempt to harmonize the recent Supreme Court and Federal Circuit decisions and provide meaningful and much sought after direction to both examiners and patent applicants alike.
Inventing to Nowhere – Although it is very much part of a PR campaign, the new documentary Inventing to Nowhere is also really well done. Now streaming online through the link provided. The film tells the story of two inventors involved in a start-up. Through the story and interviews, the lay viewer learns the importance of IP and some of the potentially negative effects of patent reform.
Myriad, Omaha Steaks, Kudelski – Myriad Genetics Inc. (MYGN) lost its bid to block competing DNA tests to determine risk for breast and ovarian cancer as a U.S. appeals court said three patents on the tests never should have been issued; Kudelski SA’s (KUD) OpenTV unit lost a patent case it brought against Netflix Inc. (NFLX), the streaming video service for watching television shows and movies, PC World reported; Omaha Steaks International Inc., a Nebraska purveyor of premium beef cuts, settled a trademark dispute with a Seattle meatpacker, according to a Dec. 12 court filing.
Patents, Antitrust, and the Rule of Reason – Antitrust law has historically immunized many patent agreements if they fell within the “scope of the patent.” Three dissenting Justices in the Actavis case advocated this test: a pharmaceutical pay-for-delay settlement falls within the scope of the patent if it delays a competitor’s entry no longer than the remaining life of the patent. In that case the patentee will not be obtaining any more than it would from a valid patent — namely, the right to exclude infringers for the full patent term. The “scope of the patent” test is not useful for defining the boundaries of antitrust immunity in most cases, however, including Actavis itself. One problem is that it forces judges to assess patent validity in cases where such assessments are costly, indeterminate, and unnecessary. It also leads to different results when the patentee is vertically integrated and when it is not.

December 22, 2014

Promega v. Life Tech: Enablement and Open Claim Elements – This case involves an interesting enablement analysis, which revolves around the term “comprising.” In addition, the case involves a holding on 271(f) liability for international inducement (the portion of the opinion as to which Chief Judge Prost dissented). The patents at issue relate to DNA, and specifically to the amplification of particular “short tandem repeats” (STR) loci. These loci are important because they can be used to create a DNA “fingerprint” unique to each individual.
Federal Circuit: Next Round of Myriad Patent Claims Are Also Invalid – The asserted claims from the ‘282 and ‘492 patents are all directed to DNA primers used to bind the chromosomal section of the BRCA1 gene during PCR (the DNA-amplification process). In reviewing these claims, the Federal Circuit found that the “primers before us are not distinguishable from the isolated DNA found patent-ineligible in Myriad and are not similar to the cDNA found to be patent-eligible.”
Myriad Loses Appeals Court Bid to Block Breast Cancer Tests – Myriad Genetics Inc. (MYGN) can’t block competitors’ DNA tests to determine risk for breast and ovarian cancer after a U.S. appeals court said three patents on the tests never should have been issued. The patents cover products of nature and ideas that aren’t eligible for legal protection, the U.S. Court of Appeals for the Federal Circuit said in an opinion posted today on the court’s docket. The court upheld a trial judge’s decision to allow the competing tests, including those made by Ambry Genetics Corp., to remain on the market.
Seventh Circuit Cites Petrella to Save Copyright Suit from Dismissal – The U.S. Court of Appeals for the Seventh Circuit applied the Supreme Court of the United States’ May 2014 ruling in Petrella (IP Update, Vol. 17, No. 5) when it reversed an Illinois district court’s dismissal of a copyright infringement claim and confirmed that the applicable statute of limitations does not begin to run when a copyright owner has mere “inquiry notice” of infringing acts, but only once the copyright owner has actually discovered an act of copyright infringement. Chicago Building Design, P.C., et. al. v. Mongolian House, Inc., et. al., Case No. 12-3037 (7th Cir., Oct. 23, 2014) (Sykes, J.)
Palsgraf, Principles of Tort Law, and the Persistent Need for Common-Law Judgment in IP Infringement Cases – Judge Cardozo wrestled with how far along a railroad platform liability for dropping a package containing dangerous but hidden items should extend. Just so, courts today must decide how far out on the web of Internet commerce infringement liability must extend. Their decisions inevitably involve proximate cause. Insofar as culpability is concerned, IP infringement cases differ from other tort cases in one important respect. Primary or direct liability for infringement has always been a strict-liability offense, independent of culpability and the infringer’s intent or state of mind. Yet, secondary liability—contributory infringement, inducement liability and vicarious liability—is not so limited. As court after court has addressed novel issues of secondary liability, it has fallen back on the tried and true notion of culpability. The Supreme Court itself did so in creating a cause of action for intentional inducement of copyright infringement out of whole common-law cloth.

December 19, 2014

Myriad Loses Appeals Court Bid to Block Breast Cancer Tests – Myriad Genetics Inc. (MYGN) can’t block competitors’ DNA tests to determine risk for breast and ovarian cancer after a U.S. appeals court said three patents on the tests never should have been issued. The patents cover products of nature and ideas that aren’t eligible for legal protection, the U.S. Court of Appeals for the Federal Circuit said in an opinion posted today on the court’s docket. The court upheld a trial judge’s decision to allow the competing tests, including those made by Ambry Genetics Corp., to remain on the market.
Form Over Substance: CAFC Kills Patent Due to Paralegal Mistake – Article discusses a recent decision from the United States Court of Appeals for the Federal Circuit in Japanese Foundation for Cancer Research v. Lee, which is the epitome of reaching the right legal decision instead of doing what is fair and just. A paralegal made a mistake, instructed the U.S. representatives to file a terminal disclaimer abandoning a patent, the paperwork was signed and filed by the attorney of record, and then immediately the error was identified. In fact, the mistake was identified and attempts made to mitigate the mistake even prior to the filing ever appearing in the PAIR system operated by the United States Patent and Trademark Office. Yet, at the end of the day, even though there was no question that the chain of events was caused by a paralegal misunderstanding what she was asked to do, the patent still winds up effectively nullified.
New Orleans Snowball Fight Now Subject of Petition for Certiorari – A 28-year battle between competitors in the snowball—shaved ice, snow cones, etc., depending on where you live—machine and flavorings industry in New Orleans is the subject of a petition for writ of certiorari filed Dec. 1 (SnoWizard Holdings, Inc. v. S. Snow Mfg. Co., U.S., No. 14-684, review sought 12/1/14). SnoWizard Holdings Inc. is appealing two aspects of a U.S. Court of Appeals for the Federal Circuit decision that left it without a patent infringement claim against Southern Snow Manufacturing Co. because of invalidity under the on-sale bar of 35 U.S.C. §102(b), and dueling trademark infringement awards against each side of about $10,000 (S. Snow Mfg. Co. v. SnoWizard Holdings, Inc., 567 Fed. Appx. 945 (Fed. Cir. 2014)).
IBM’s Outgoing General Counsel Looks Back at the Future – “Imagine having Watson there with you in the courtroom,” said Robert C. Weber, general counsel for International Business Machines Corp., referring to the company’s problem-solving software of Jeopardy! fame. “There are a lot more cases out there than anybody can keep track of. The facts of cases are sometimes extremely complex.” Watson, in this conceiving, would have all the facts and the cases at his command. The software could weigh the pros and cons of a legal argument, on the spot, in the same way Watson is learning how to marry patient records with medical literature for treatment options. “Having Watson there with you as a lawyer gives you an associate with encyclopedic knowledge and inexhaustible work ethic.”
Still Dissatisfied After All These Years: Intellectual Property, Post-WTO China, and the Avoidable Cycle of Futility – Every year, the United States is estimated to lose billions of dollars due to piracy and counterfeiting in China alone. As the 2005 National Trade Estimate Report on Foreign Trade Barriers stated: “According to some reports, inadequate enforcement has resulted in infringement levels in China that have remained at 90% or above in 2004 for virtually every form of intellectual property, while estimated U.S. losses due to the piracy of copyrighted materials alone range between $2.5 billion and $3.8 billion annually.” Commentators have already widely discussed the piracy and counterfeiting problems in China. Instead of repeating this discussion or challenging the misleading figures supplied by U.S. business groups, this Essay focuses on the recent debate about whether the U.S. administration should file a formal complaint against China with the Dispute Settlement Body of the World Trade Organization (WTO) over inadequate enforcement of intellectual property rights

December 18, 2014

Toyota Motor Corporation v. American Vehicular Sciences LLC, IPR2013-00416: Final Written Decision IPR2013-00416 – In its Final Written Decision, the Board decided that Petitioner had demonstrated that claims 1, 6-8, 17, and 18 of the ’501 patent are unpatentable as anticipated by Probst under 35 U.S.C. § 102(b); and that claims 1, 4-10, 17, and 18 of the ’501 patent are unpatentable as having been obvious under 35 U.S.C. § 103 in view of Scholl taken in combination with Probst. Takeaway: Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight, and the Board has discretion to give weight to one item of evidence over another unless no reasonable trier of fact could have done so.
Judge Slams O’Melveny in Sirius XM Copyright Brawl – Soon after swooping in to represent Sirius XM Radio Inc. in potentially industry-shaking copyright litigation, O’Melveny & Myers suffered a nasty setback when a judge ruled that newly-cited precedent trumpeted by the firm had been overruled 60 years ago. In a scathing order issued on Friday, U.S. District Judge Colleen McMahon in Manhattan ruled that she hadn’t erred when she failed to apply RCA Manufacturing v. Whiteman in concluding last month that Sirius must pay royalties to broadcast pre-1972 records. “The only clear error in this case is O’Melveny’s,” Judge Colleen McMahon wrote in Friday’s decision. She also blasted the firm for “deliberately missing the point” and “doing nothing but raise red herrings” since making its initial appearance in the case in November.
USPTO Releases Patent Eligibility Guidance – On December 15 the United States Patent and Trademark Office released its much anticipated 2014 Interim Guidance on Patent Subject Matter Eligibility, which the in the industry has largely been dubbed USPTO 101 guidance. The guidance, which was signed on December 10, 2014, by USPTO Deputy Director Michelle Lee, will officially publish in the Federal Register on December 16, 2014. This eligibility guidance will become effective immediately upon publication in the Federal Register.
Cipla, Sony Hack, Nestle, Fogerty – Cipla Ltd. (CIPLA)’s request that India cancel patents covering five Novartis AG (NOVN) drugs isn’t finding much traction, the Times of India reported; Sony Pictures Entertainment (SNE) requested that news outlets stop disclosing material from a devastating computer hack as its studio chief made plans to meet a civil-rights leader after the exposure of a racially tinged e-mail exchange; Nestle SA (NESN), the packaged food company, has lost a trademark challenge in Singapore, the Confectionery News trade publication reported; Singer John Fogerty has responded to the Dec. 5 trademark suit his former Creedence Clearwater Revival bandmates filed against him.
Ninth Circuit Takes Up ‘Innocence of Muslims’ Take-Down Case – Actress Cindy Lee Garcia’s two-year quest to scrub the Internet of her appearance in the anti-Islamic film “Innocence of Muslims” was the departure point for a roving argument before an 11-judge panel of the U.S. Court of Appeals for the Ninth Circuit in Pasadena Monday afternoon. In a discussion that touched on the copyright interest owed to artists from Celine Dion to an extra in a battle scene of one of the Lord of the Rings movies, the Ninth Circuit considered Garcia’s claim to a copyright in her performance in the film and whether it warrants an injunction barring Google Inc. from hosting the video on YouTube.

December 17, 2014

For the First Time PTAB Upholds Validity of Pharma Patents – On December 9, 2014, the Patent Trial and Appeal Board (“PTAB”) upheld the validity of three Supernus Pharmaceutical’s patents relating to once-daily formulations of doxycycline. The trio of decisions is significant because one of the three patents had been at issue in a Hatch Waxman litigation. The PTAB’s decision with respect to this patent marks the first time the Board has reached a final decision regarding the validity of a patent first put at issue in litigation filed under the Hatch-Waxman Act.
Valley’s Patent Bar Hears From New Federal Circuit Chief – Sharon Prost wasn’t expected to become chief judge of the Federal Circuit. Had former chief Randall Rader served out his entire term, rather than step down unexpectedly last spring, Prost, 64, would have been too old to qualify. “I didn’t have the best part about being chief judge—everybody knowing you’re going to be chief judge, but not having to do the everyday work,” Prost joked Thursday at a Silicon Valley conference on patent law. Prost has led the U.S. Court of Appeals for the Federal Circuit for six months now. She talked about leading the court­—and the scrutiny it has been getting from the U.S. Supreme Court—at a conference jointly sponsored by the Berkeley Center for Law and Technology and the Stanford Program in Law, Science and Technology.
Developing a patent portfolio that can withstand the ‘death squad’ for patents – In this article, we suggest ways to amend and add claims in patents undergoing IPR using continuing applications, reissue applications and ex parte reexamination. Once they have issued, the new and amended claims should be less vulnerable to IPR and can be used to force a more favorable outcome with an alleged infringer than might be otherwise possible. To date, IPR has been lethal for patents, with at least one claim invalidated in over 80 percent of the IPRs that have reached final written decision and all of the challenged claims invalidated in over 58 percent of the IPRs that have reached final written decision.
IP5 Annual Report – From the perspective of the leading patenting countries, the World Intellectual Property Organization (WIPO) has become a non-productive and fairly toxic environment with regard to international cooperation and substantive harmonization. Although the US continues to fully participate in WIPO, most progress and cooperation has come through bilateral and multilateral agreements between trading partners and regional patent offices. The leading new organization is the IP5 that is a cooperative group including the USPTO, European Patent Office (EPO), Japanese Patent Office (JPO), Korean Intellectual Property Organization (KIPO), and the Chinese Patent Office (SIPO). The organization formerly operated as the tri-lateral cooperative, but in recent years added KIPO and SIPO to the ranks. (The EPO includes 37 European Nations.)
Changing Trends in the Content and Purpose of Mexico’s Intellectual Property Right Regime – Intellectual property matters have come to occupy an increasinglyimportant place in the ongoing discussions regarding international trade and development. For example, over the last two years, debate has continued on a number of fronts: the negotiations on Trade Related Aspects of Intellectual Property Rights (TRIPs) in the context of the Uruguay Round negotiations of the General Agreement on Tariffs and Trade (GATT), the efforts of the United States Trade Representative (USTR) to make international intellectual property laws compatible with the perceived interests of the United States, and the continuing attempts by the World Intellectual Property Organization (WIPO) and others, including the European Communities (EC) to harmonize regional and international patent and industrial property law regimes.

December 15, 2014

Toyota Motor Corp. v. American Vehicular Sciences LLC: Final Written Decision IPR2013-00415 – In its Final Written Decision, the Board determined that Petitioner showed by a preponderance of the evidence that all of the challenged claims of the ’210 patent are unpatentable. The ’210 patent relates to arrangements and techniques for managing vehicle diagnostic information. In an embodiment, sensors are arranged throughout the vehicle to collect data and an antenna array is mounted on the vehicle to receive wireless signals from the sensors. A control system processes the signals for display and/or transmission to a remote location. Takeaway: When interpreting claims, the Board may interpret claim terms for which the parties did not expressly propose constructions when necessary to evaluate the parties’ arguments.
1998: Federal Circuit Says Yes to Business Methods – In State Street Bank & Trust v. Signature Financial Group, the patent in question was U.S. Patent No. 5,193,056, which issued to Signature Financial Group on March 9, 1993. The ‘056 patent was generally directed to a data processing system for implementing an investment structure which was developed for use in Signature’s business as an administrator and accounting agent for mutual funds. In essence, the system, identified by the proprietary name Hub and Spoke®, facilitates a structure whereby mutual funds (Spokes) pool their assets in an investment portfolio (Hub) organized as a partnership. State Street was in talks with Signature Financial to acquire a license, and when talks broke down they brought a declaratory judgment action to have the ‘056 patent claims declared invalid. There were several critical issues in play in State Street. First was the so-called mathematical algorithm exception to patentable subject matter, and the other was the business method exception to patentable subject matter.
Copyright Claims Unify Amici in Trailer Take Down Case – While the film “Innocence of Muslims” sparked a global outcry, a suit seeking to pull the controversial film off YouTube didn’t stir much passion—at least at first. “It wasn’t that we didn’t know about this case,” says Corynne McSherry, the intellectual property director the Electronic Frontier Foundation. The underlying copyright issues just seemed cut-and-dry. “We just assumed that the Ninth Circuit would affirm” the district court’s denial of an injunction based on copyright infringement,” she said. Now, with an en banc Ninth Circuit panel set to hear arguments in Garcia v. Google Monday in Pasadena, copyright lawyers are watching intently. So are Silicon Valley technology companies who see the case threatening anyone who hosts user-generated content.
Meeting Halfway: The Increasing Role of Intermediaries in Protecting UK Intellectual Property Rights Online – The last two decades of the internet have dramatically reshaped how we do business and consume creative content. During that time, the internet has become widespread and truly global. This has meant that the role of the internet intermediaries have become a focus in combating IP infringement in the online world. This has raised some questions as to who should be responsible for the costs of compliance and how to limit the impact of any restrictions on lawful internet users.
Section 337 and the GATT: A Necessary Protection or an Unfair Trade Practice? – As the ever-increasing volume of world trade creates a greater interdependence among nations, perhaps no provision of American law figures more prominently in the future of American foreign trade than the controversial Section 337 of the Tariff Act of 1930. For years, this competitively-couched statute labored in relative obscurity due to its virtual insignificance on the international scene. The Trade Act of 1974, however, revitalized Section 337 and in doing so established the ITC as the forum of choice for foreign unfair competition claims.

December 10, 2014

Marvell Semiconductor, Inc. v. Intellectual Ventures I LLC, IPR2014-00547: Denying Institution IPR2014-00547 – In its Decision, the Board declined to institute inter partes review of any of challenged claims 7-12 or 19-24 of the ’944 patent. Specifically, the Board held that Petitioner had not shown a reasonable likelihood that it would succeed in proving that any one of claims 7-12 or 19-24 is unpatentable under the various grounds set forth in the Petition. Takeaway: There must be some articulated reasoning with some rational underpinning to support each proposed legal conclusion of obviousness.
US Supreme Court to Hear Appeal in Patent Fight with Cisco – The U.S. Supreme Court has agreed to hear an appeal of a controversial appeals court decision that set aside a $63.8 million patent infringement verdict won by The Woodlands, Texas-based Commil USA LLC against Cisco Systems Inc. Attorneys Mark S. Werbner, Richard A. “Dick” Sayles, Mark D. Strachan and Darren Nicholson of Dallas-based Sayles Werbner represent Commil in the appeal along with Leslie V. Payne, Nathan J. Davis and Miranda Y. Jones from Houston’s Heim, Payne & Chorush. The Sayles Werbner team represented Commil in the 2011 trial in the U.S. District Court for the Eastern District of Texas over a patent covering wireless networking technology.
When Trademarks Overlap With Other IP Rights: conference report 10 – The final session of the INTA’s two-day conference marathon continued the theme of the previous session, but looked at the trade mark/publicity overlap from the perspective of some trade mark owners which rely on taking licences from well-known celebrities and sportsmen: Joseph J. Conklin (Coty) and Alexander Ballasch (DFL Deutsche Fussball Liga GmbH). The DFL football connection is obvious, but Coty has a football connection too, via the Beckham brand. Alexander spoke of the contents of the licenses granted to the DFL by the football players. Players do not transfer all their rights, but only their rights as Bundesliga players and their rights other than in relation to their own football teams, and the football clubs transfer their equivalent rights to the DFL too. In contrast, in the US the use of a persona is governed by state tort law.
EU Commission Publishes Fifth Report On Patent Settlements In the Pharmaceutical Sector – The European Commission published its Fifth Monitoring Report of Patent Settlements today. Patent settlements enable patent-related disputes to be resolved without having to litigate issues such as patent validity or patent infringement. The Commission takes the view that patent settlements can infringe competition law when they prompt generic suppliers to delay entry in return for a value transfer from the originator to the generic company (which may take the form of a commercial benefit other than a payment). However, in the report the European Commission acknowledges that there is no presumption that patent settlements violate competition rules, noting that a case-by-case analysis is required.
EU Tax, Cisco, Google, Burger King: Intellectual Property – European Union nations that offer “patent box” tax breaks should retool their laws so that only deserving companies can claim benefits tied to technical innovations, according to a draft report from a European Union working group; The U.S. Supreme Court agreed to use a case stemming from a $64 million award against Cisco Systems Inc. (CSCO) to consider making it easier to win some types of patent lawsuits; Google Inc. urged an appeals court to uphold its victory in a court challenge to its project to digitally copy millions of books; Kentucky Teachers’ Pension System Won’t Reveal Contract Details; Burger King Corp. is facing a potential trademark challenge in India, the Business Standard newspaper reported; DuPont Co. (DD), the U.S. chemical company, persuaded India’s Intellectual Property Appeal Board to reconsider the registration of its “Nomex” trademark by an Indian medical products company, the Financial Express reported.

December 9, 2014

Slicing the Bologna: Judge Chen Distinguishes this Business Method from those Found Ineligible in Alice, Bilski, and Ultramercial – Typically, Supreme Court patent cases alter Federal Circuit precedent, while – at the same time – leaving many open questions for the appellate court to address. That standard certainly fits the recent set of patent eligibility cases. In Alice Corp v. CLS Bank (2014) the Supreme Court outlined an eligibility test whose practical impact will vary greatly depending upon how it is implemented by the Patent Office and the court: broadly or narrowly?
The Latest on Inherent Obviousness – On December 3, 2014, the Federal Circuit issued a decision in Par Pharmaceutical, Inc. and Alkermes Pharma Ireland Limited v. TWI Pharmaceuticals, Inc., agreeing with the district court’s analysis and conclusions on motivation to combine, reasonable expectation of success, and objective indicia of nonobviousness but vacating and remanding for further analysis on the issue of inherency.
Europe, Israel, Sign Historic Patent Prosecution Highway Agreement – The European Patent Office has signed a Patent Prosecution Highway (PPH) pilot program with the Israel Patent Office which will enable the accelerated treatment of patent applications starting January 2015. The heads of the two offices signed the agreement yesterday in Brussels. The pilot program will leverage fast-track patent examination procedures in order to enable innovators from Europe and Israel to obtain patents more quickly and efficiently. The EPO recently signed similar agreements with the patent offices of Canada, Mexico and Singapore. All four pilot programs will begin on 6 January 2015.
Authors Guild Opposes Google’s Fair Use Claim in Federal Appeals Court – Reporters, observers and lawyers lined up early Wednesday afternoon to guarantee themselves a seat in Courtroom 1703 of the Thurgood Marshall U.S. Courthouse in downtown New York City. The case of the day was the oral argument in the appeal of the Authors Guild’s ongoing copyright infringement case against Google. The Guild is appealing a November 2013 district court ruling that Google’s unauthorized copying of millions of copyrighted books was a fair use of those works. Paul Smith, a recent addition to the Guild’s legal team, argued for the Authors Guild. Smith, who has appeared in the Supreme Court fifteen times and in scores of appellate courts over a span of three decades, will also help the Guild position the case for an appeal to the Supreme Court, if that becomes necessary.
The First of Many Steps: The EU Unitary Patent, Software, and What the United Kingdom Should Do Next – This Comment begins by first offering a brief overview of the software protections available under current U.K. and EU law. Next, this Comment will introduce the concept of a unitary patent, and explain how software could become involved. After doing so, this Comment will evaluate the unitary patent, and ultimately argue that, due to protections currently embedded in the European Union’s patent law jurisprudence, the unitary patent does not pose a significant threat that the scope of software protection by patent would be expanded, and provides several advantages over the current, country-by-country patenting system. Finally, this Comment, taking in account the software industry’s desire for increased software protection, will propose expanding software protection beyond its current state. It will do this by first discussing the means to enable such an expansion, and will then make a particular recommendation: a system that models portions of the Digital Millennium Copyright Act.

December 8, 2014

MotivePower, Inc. v. Cutsforth, Inc., Final Written Decision IPR2013-00274 – In its Final Written Decision, the Board determined that claims 1-24 of the ’018 patent are unpatentable. The ’018 patent relates generally to a brush holder assembly for use in electrical devices and slip ring assemblies. In particular, the patent describes that a brush is used in an electrical device to pass electrical current from a stationary contact to a moving contact surface, and vice versa. Takeaway: Evidence of alleged secondary considerations of non-obviousness will not persuade the Board when there is no evidence of a nexus between the claimed invention and the alleged long-felt need, praise, copying, or commercial success.
Inventor Testimony in Patent Litigation – The long-running technology and Internet boom has spawned extensive patent litigation as companies seek an edge over competitors by suing for infringement. Many of the entrepreneurial founders of technology companies are themselves extremely knowledgeable about the technologies on which their businesses are based. As such, parties often perceive advantages to having the inventor of a patent or of an allegedly infringing product testify concerning the relevant technologies. Among such advantages is that an inventor can testify based on firsthand experience and may thus be in the best position to credibly describe the relevant technologies to a jury. However, this strategy has downsides as well, insofar as courts have questioned how far a lay witness can go in testifying about technical matters before he or she must be designated as an expert witness (a designation which activates a whole set of requirements under the Federal Rules of Evidence). This issue was recently taken up in 523 IP LLC v. CureMD.com, 2014 WL 4746140 (S.D.N.Y. Sept. 24, 2014), in which the parties pursued contrasting strategies, with the plaintiff proffering its founder as an expert witness and the defendant offering its founder as a lay witness providing opinion testimony.
Federal Circuit Finds Software Patent Claim Patent Eligible – The United States Court of Appeals for the Federal Circuit recently issued a ruling in DDR Holdings, LLC v. Hotels.com, L.P. The appeal was brought by defendants National Leisure Group, Inc. and World Travel Holdings, Inc. (collectively, NLG), who appealed from a final judgment of the United States District Court for the Eastern District of Texas entered in favor of DDR Holdings. Following trial, a jury found that NLG infringed the asserted claims of U.S. Patent Nos. 6,993,572 and 7,818,399. The jury also found the asserted claims of the ’572 and ’399 patents were not invalid and awarded $750,000 in damages. On appeal to the Federal Circuit, in an opinion written by Judge Chen and joined by Judge Wallach, determined that the asserted claims of the ’572 patent were anticipated under 35 U.S.C. § 102(a) and, therefore, vacated the award of damages and prejudgment interest to DDR, which had been collectively premised on infringement of the ’572 and ’399 patents and without apportionment.
Court Steps Into Patent Debate That Split Technology Companies – The top U.S. patent court, for the first time, is stepping into a debate that has splintered the technology community over how to value patents that cover essential technologies like Wi-Fi. Ruling on Ericsson AB’s contribution to the industry standard for Wi-Fi, which incorporates more than a thousand patented inventions, the U.S. Court of Appeals for the Federal Circuit in Washington said patent licensing fees should be based on the incremental value of each invention, and not the value of the standard as a whole. It also limited the ability of defendants to argue that, in some cases, patents are misused to extract higher royalties.
Responsible Patent Protections: Preserving Public Health Objectives in the Trans-Pacific Partnership Agreement – Patent protection, as a part of the larger package of intellectual property protection, plays a prominent role in today’s free trade agreement negotiations. As the business of pharmaceuticals increases internationally, the degree of protection nations incorporate into these agreements has a direct effect on access to medicine around the world. As a matter of intellectual property, the premier governing document is the Agreement on Trade-Related Aspects of Intellectual Property (“TRIPS”). TRIPS creates, at a minimum, floors which signatory countries must implement into their respective domestic policies. In a post-TRIPS world, however, we see countries increasingly relying on bilateral agreements to achieve higher standards of intellectual property rights. These higher standards have a particularly debilitating effect on how lower income countries provide their citizens access to life-saving medication.

December 4, 2014

Freeman-Walter-Abele – A Tortured History of Software Eligibility – The so-called Freeman-Walter-Abele test has been defunct for quite some time, dating back to the Federal Circuit doing away with the test in In re Alappat. Nevertheless, the Freeman-Walter-Abele test is quite an important step in the history of software patents in the United States. The reason to spend a significant amount of time discussing the rise and fall of the Freeman-Walter-Abeletest is three-fold. First, the test was widely criticized (rightfully so) as being so flexible that any District Court Judge or three-Judge panel of the Federal Circuit could apply it to justify any preconceived notions and ideological preferences. The second reason to focus on the Freeman-Walter-Abele test is because there is no way to ignore the fact that the more recent tests in the software space are best characterized as versions of the Freeman-Walter-Abele test in disguise. Finally, as the Court of Customs and Patent Appeals and then the Federal Circuit struggled with In re Freeman, In re Walter and In re Abele, they were trying to reconcile seemingly irreconcilable Supreme Court precedent in Gottschalk v. Benson, Parker v. Flook, and Diamond v. Diehr.
Supreme Court Ponders Trademark Odyssey of Sealtight vs. Sealtite – Cases headed to the Supreme Court can be a long time in the making, and that’s especially true for a 16-year-old trademark law battle the justices took up Tuesday over phonetically identical names for brands of screws. After an hour long oral argument, it appeared possible the high court could issue an eventual ruling that would lead to even more litigation between two companies that are bitterly at odds in the case. The case has its roots in a dispute born in the late 1990s. The plaintiff is B&B Hardware Inc., a Southern California business that sells self-sealing, leak-proof screws and bolts under the brand name Sealtight. Its products have been used in high-tech environments, including in the aerospace and medical industries. It alleged consumers were confused, and its business damaged, by a Texas company that sold construction screws under the name Sealtite Building Fasteners. Sealtite says its brand doesn’t cause confusion with Sealtight because it sells different types of products to different classes of customers.
Conservative lawyers question need for patent troll legislation – So-called patent trolls may not be as big of a problem as some advocates of U.S. patent reform make them out to be, some conservative patent experts say, in a split with many Republican lawmakers. Congress should step back and determine whether patent trolls are causing serious problems in the U.S. patent system before moving forward with patent reform legislation in 2015, said other speakers at a Federalist Society for Law and Public Policy Studies patent reform discussion Tuesday. Congress is likely to move forward with legislation next year targeting legal maneuvers often used by patent trolls, generally defined as patent holding companies that use questionable legal methods to extract licensing fees from other businesses. But Tuesday’s event illustrated a split among Republicans on patent reform, with conservative patent experts there wary of legislation that targets patent trolls.
Ethics Webinar on Inequitable Conduct – The American Intellectual Property Law Association (AIPLA) will be offering a webinar entitled “Is Inequitable Conduct Making Its Comeback?” on December 11, 2014 from 12:30 – 2:00 pm (Eastern). Matthew Blackburn of Locke Lord, and Keith McWha of McCarter & English will address recent post-Therasense Federal Circuit decisions relating to inequitable conduct, including the Federal Circuit’s decisions in American Calcar v. American Honda, Apotex Inc. v. UCB, and Intellect Wireless, Inc. v. HTC affirming findings of inequitable conduct, and discuss the impact of these decisions as a tool in patent litigation and as cautionary tales in patent prosecution.
From Incentive to Commodity to Asset: How International Law is Reconceptualizing Intellectual Property – Domestic patent, copyright and trademark regimes are traditionally justified on an incentive rationale. While international intellectual property agreements are nominally aimed at harnessing global markets to expand incentives, this article argues that as these agreements come into force, a subtle, but significant, reconceptualization is taking place. Free trade agreements treat intellectual property rights as commodities; bilateral investment treaties convert them into assets. Using examples involving the “working requirement” in patent law and pending disputes challenging Australia’s limits on the use of trademarks on tobacco products, we show that as these moves progressively detach intellectual property from its incentives basis, domestic authority to promote local concerns such as health, education, and development is increasingly impaired. The authors end with proposals for interpreting the impact of existing agreements and for revising international lawmaking so that intellectual property mechanisms can be exploited to motivate innovation without damaging state authority to safeguard public values. While we recognize that technologically sophisticated countries (such as the United States) will continue to demand stronger intellectual property protection worldwide to compensate for losses in their manufacturing sectors, a system that fails to recognize consumer interests also impedes follow-on innovation and entry by start-ups. Balance is, in short, important for every country, no matter where its sits in the technological hierarchy. Furthermore, those now pushing the commodification and assetization agenda must consider how reconceptualization will affect them in the future, when their position in the hierarchy may well be different.

December 3, 2014

Fabricating Evidence and Losing Arbitration – Addressing an issue of whether an arbitrator inappropriately sanctioned a party that had been found to have fabricated evidence and whether the arbitrator refused to consider certain evidence, the Minnesota Supreme Court upheld the arbitrator’s sanctions and the $630 million award. Seagate Tech., LLC v. W. Digital Corp, Case No. A12-1944 (Minn. Supr. Ct., Oct. 8, 2014) (Anderson, J.) The Court concluded that the arbitrator’s award, which included punitive sanctions, was proper even though it did not give weight to certain evidence presented during the arbitration hearing.
Appellate Review of Patent Claim Construction and Institutional Competence – The U.S. Supreme Court heard argument six weeks ago in Teva Pharmaceuticals USA v. Sandoz, a case addressing the scope of appellate review of claim construction rulings. While less headline-grabbing than recent cases addressing the patentability of business methods, computer software, and DNA, Teva nonetheless confronts a critical issue that has long plagued the patent adjudication system.
No Fair Use for Digital Excerpts – Oxford University Press, Cambridge University Press and Sage Publications (collectively, the plaintiffs) sued several officials at Georgia State University (GSU) claiming that GSU had encouraged its professors to upload copyrighted works to the school’s electric reserve system. The U.S. Court of Appeals for the 11th Circuit vacated the district court’s decision holding that digital excerpts of books from three academic publishers provided to students at Georgia State University were protected by fair use, finding that the district court erred in giving each of the four factors used in the fair use analysis equal weight. Cambridge University Press et al v. Patton et al., Case Nos. 12-14676; 15147 (11th Cir., Oct. 17, 2014) (Tjoflat, J.)
What the Courts Did to Curb Patent Trolling—for Now – The Atlantic (lay opinion) – Several Supreme Court decisions offer some help to those “being trolled.” First, through decisions issued in April (here and here), the Court made it somewhat easier for a defendant to recover its legal costs if the judge sees the plaintiff’s suit as frivolous. Then in June, the Court made it easier to challenge the validity of a vague patent. Finally, and most importantly, in Alice Corp. v CLS Bank, also decided in June, the Court made it clear that you can’t get a patent just for implementing an existing business method on a computer.
The Rise of the End User in Patent Litigation – The patent system focuses on the actions of two players: the patentee and its competitor. It assumes that the competitor will represent the interests of the end user. But, end users are increasingly becoming significant players in the patent system, with their interests sometimes diverging from those of competitors. Attention has recently turned to Patent Assertion Entities (“PAEs”)—also known as patent trolls—who are suing vast numbers of customers using patented technologies in their everyday businesses. Yet, end users were also principal players in some of the main recent patent cases before the U.S. Supreme Court. In Bowman v. Monsanto Co., Monsanto sued farmers for re-using its patented self-replicating seeds. In Association for Molecular Pathology v. Myriad Genetics, patients and physicians sued to invalidate breast cancer gene patents. And, patients and drug stores repeatedly challenge pay-for-delay agreements between patentees and competitors, claiming they undermine patients’ interests in access to generic drugs.

December 2, 2014

Seventh Circuit Cites Petrella to Save Copyright Suit from Dismissal – The U.S. Court of Appeals for the Seventh Circuit applied the Supreme Court of the United States’ May 2014 ruling in Petrella when it reversed an Illinois district court’s dismissal of a copyright infringement claim and confirmed that the applicable statute of limitations does not begin to run when a copyright owner has mere “inquiry notice” of infringing acts, but only once the copyright owner has actually discovered an act of copyright infringement. Chicago Building Design, P.C., et. al. v. Mongolian House, Inc., et. al.,Case No. 12-3037 (7th Cir., Oct. 23, 2014) (Sykes, J.)
USPTO’s Swelling Examiner Rolls – In FY2014, the USPTO swelled to over 12,000 employees. This represents a 50% increase in less than a decade. As the chart on the linked page indicates, the bulk of the increase (and indeed, the bulk of employees overall) is in patent examiners. Today, the number of patent examiners is approaching 9,000 and Director Lee expects to continue to hire more examiners through the next year.
Examination of Myriad-Mayo Guidance Comments — The Coalition for 21st Century Medicine – On March 4, the U.S. Patent and Trademark Office issued a guidance memorandum, entitled “Guidance For Determining Subject Matter Eligibility Of Claims Reciting Or Involving Laws of Nature, Natural Phenomena, & Natural Products” (or “Myriad-Mayo Guidance”), to implement a new procedure for determining the subject matter eligibility of claims under 35 U.S.C. § 101 in view of the Supreme Court’s decisions in Association for Molecular Pathology v. Myriad Genetics, Inc. (2013), and Mayo Collaborative Services v. Prometheus Laboratories, Inc. (2012). At a public forum hosted at the USPTO in May, the Office encouraged shareholders to submit written comments on the Guidance. Since the forum, the Office has encouraged the patent community to provide further feedback regarding the Guidance (despite the Office’s announced deadline of July 31 for submitting comments).
Federal Circuit Says District Courts Should Freely Grant Stays When CBM Proceeding Instituted – On November 20, 2014, the Federal Circuit issued its decision in Versata Software, Inc. v. Callidus Software, Inc. reversing the district court’s denial of a motion to stay pending a Covered Business Method (“CBM”) review of the patents asserted by Versata in the action. The Court’s decision signaled that district courts should freely grant stays in pending CBM reviews instituted by the Patent Trial and Appeal Board (“PTAB”). More importantly, the Court ruled that stays can be warranted even when a CBM proceeding does not address all asserted patents, claims or invalidity defenses in a district court action. The Federal Circuit’s decision may be influential to district courts’ rulings on motions to stay in other post-issuance proceedings, such as Inter Partes Review (“IPR”).
Patent Trolling: Why Bio & Pharmaceuticals Are At Risk – Patent trolls—also known variously as non-practicing entities, patent assertion entities, and patent monetizers—are a top priority on legislative and regulatory reform agendas. In modern debates, however, the biopharmaceutical industry goes conspicuously unmentioned. Although the biopharmaceutical industry is paradigmatically centered on patents, conventional wisdom holds that it is largely unthreatened by trolls. This Article shows that the conventional wisdom is wrong, both theoretically and descriptively. In particular, the Article presents a ground-breaking study of the life sciences patent holdings of 5 major universities to determine if these might be attractive to monetizers. This search was deliberately light, rather than exhaustive. Nevertheless, we identified dozens of patents that could be deployed against current industries. These include patents on the active ingredients of drugs, methods of treatment, screening methods to identify new drugs, manufacturing methods, dosage forms, and ancillary technologies that could be deployed in a “peddler’s bag” approach. The Article describes the types of patents we found, including an example of each type.

December 1, 2014

Confidentiality Agreements Not Enforceable in Absence of Reasonable Efforts to Preserve Confidentiality – Applying Illinois law, the U.S. Court of Appeals for the Seventh Circuit reminded prospective business partners that non-disclosure agreements will not be effective by themselves to protect information a company regards as confidential and proprietary. To be enforceable, the information itself must ostensibly be “confidential” and must also be subject to reasonable efforts on the part of the company to preserve its confidentiality. nClosures Inc. v. Block and Company, Inc., No.13-3906 & 14-1097 (7th Cir., Oct. 22, 2014) (Flaum, J.)
USPTO Backlog – The backlog of pending cases generally has two major inputs: (1) how many applications are filed and (2) how fast the USPTO is at examining those applications. The USPTO is operating faster than ever, but we also have more applications than ever. The author expects that the figures here will drop dramatically in FY2016.
The History of Software Patents in the United States – Software patents have a very long history in the United States. Computer implemented processes, or software, has been patented in the United States since 1968. The first software patent was granted by the United States Patent and Trademark Office (USPTO) on April 23, 1968 on an application filed on April 9, 1965, Martin A. Goetz, a pioneer in the development of the commercial software industry, was the inventor of the first software patent ever granted, U.S. Patent No. 3,380,029. Several years ago PBS Digital Studios profiled Goetz and his pursuit of the first software patent. To listen to the critics of software patents you would never know that software has been patented in the United States for nearly 50 years. The critics erroneously claim that the Federal Circuit first allowed software patents by effectively overruling the Supreme Court, but the Federal Circuit didn’t come into being until 1982, which is some 14 years after the first software patent issued, and after Supreme Court consideration of both Gottschallk v. Benson and Diamond v. Diehr.
VOLVO vs LOVOL: “a visual dictionary” in the consumer brain…? – UK & Europe perspective – Decisions that relate to Article 8(5) of Regulation 207/2009 on the Community Trade Mark (CTM) – and the question of conceptual similarity — are far and few between. In Cases T-524/11 and T-525/11 (both of 12 November 2014) the General Court recently agreed with OHIM’s Opposition Division’s and Board of Appeal’s dismissals of two oppositions against figurative trade marks including the sign LOVOL, based on an earlier word CTM mark (and word/device mark registrations) for VOLVO. The court started by explaining that the application of Article 8(5) of Regulation No 207/2009 is subject to three cumulative conditions, (1) the identity of or similarity between the marks at issue; (2) the existence of a reputation of the earlier trade mark relied on in support of the opposition; and, (3) the risk that use without due cause of the trade mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.
A Unified Framework for Rand and Other Reasonable Royalties – The framework for calculating “reasonable royalty” patent damages has evolved over the years to a point at which, today, it is viewed by many commentators as potentially misleading and untethered from its original purpose. The authors offer a proposal to modify the framework for determining reasonable patent royalties that is based on recent scholarly and judicial analyses of standards-essential patents that are subject to commitments to license on terms that are reasonable and non-discriminatory (RAND). Many standard setting organizations require owners of patents that are essential to a standard to license those patents on RAND terms, but typically offer little specific guidance to describe the royalty rates that satisfy this requirement. Litigated cases have applied the traditional Georgia-Pacific factors to assess RAND royalty rates with modifications to account for the circumstances of the RAND commitment. The authors propose that the reasonable royalty analysis should be conducted in essentially the same manner for all patents, whether or not they are encumbered by RAND commitments. The authors find considerable support for their proposed approach in the historical development of U.S. patent law prior to the advent of the Georgia-Pacific test. The author’s approach focuses on the technical and economic characteristics of allegedly infringed patents and their incremental value to the overall product offering.

November 26, 2014

Congress: In 2015 Finish the Job on Patent Trolls | Commentary – The 2013-14 Congress heard testimony from tech startups, businesses small and large, retailers, manufacturers, and bipartisan state attorneys general — just to name a few — and made a strong effort to address patent troll abuse that is vexing thousands of companies. House Judiciary Committee Chairman Robert W. Goodlatte heard the outcry, and his Innovation Act targeted those who exploit meritless patents to extort companies, oftentimes forcing them to pay settlements only because settling is cheaper than paying for a meritorious defense. The bill passed the House by a wide, bipartisan margin, and two Senate Committees had strong patent reform hearings before efforts to finalize a bill were shelved in late Spring. In the usual course of business, Congress would return to the issue in January 2015 and focus on pushing a bill over the finish line. Some, however, are claiming that the need for patent reform legislation has passed, claiming that recent U.S. Supreme Court decisions addressed stakeholders’ concerns and will effectively eliminate patent abuse. That is simply not true. To be certain, it is critically important that in 2015 Congress enact significant and comprehensive legislation, as patent troll litigation continues to grievously injure innovators, bankrupt small companies, and waste judicial resources.
Adopting Single Co-Owner Rule, 11th Cir. Affirms BMI’s Win Over Florida Tavern – The district court made a number of erroneous chain of title rulings with respect to some plaintiff publishing companies, but the errors were harmless because Broadcast Music Inc. established that it was a co-owner of the copyrights in question, the U.S. Court of Appeals for the Eleventh Circuit held Nov. 21. The court formally adopted the single co-owner rule established in a 2007 decision by the Second Circuit, holding that BMI’s proof that it owned title to the five songs in question—through a license with at least one co-owner of each song—made the erroneous rulings as to the publishing companies’ ownership harmless. That rule is supported by the text and legislative history of the Copyright Act, the court said. Thus, although the district court erroneously determined the chain of title issue in favor of two publishing companies that were also plaintiffs, there was no harm because BMI’s interest was sufficient to sustain the action regardless of those rulings, the Eleventh Circuit said. The district court’s $16,953 copyright infringement award and its $32,517 attorneys’ fees and costs award were accordingly affirmed.
You Gotta Fight For the Right to Break Digital Locks: IP Clinic Teams Up with Cinema Studies Professor, Higher Education Organizations in DMCA Rulemaking – The Digital Millennium Copyright Act makes it illegal to break digital locks on copyrighted material, even when what you intend to do with the work is otherwise legal, such as using short clips from a motion picture in a class presentation. However, there is an out. Every three years the Copyright Office holds a proceeding to consider and grant limited exemptions for uses where users can show the law is creating a substantial burden on free expression or other valuable activities. In each triennial proceeding, new petitions must be submitted on behalf of each party seeking exemptions. Petitions must make the case for what has been exempted in the past, in addition to what should be exempted in the present and future, keeping in mind new technological and pedagogical trends. Failure to submit these petitions every three years would result in a total loss of the exemption.
The African Regional Intellectual Property Organization (ARIPO) Protocol on Patents: Implications for Access to Medicines – Sub-Saharan Africa (SSA) suffers from numerous communicable and non-communicable diseases, with significant socio-economic effects, and adversely impacting the development prospects of countries in sub-Saharan Africa. Many of these diseases are treatable but access to affordable medicines remains a huge challenge in the region. A particular obstacle to access to medicines is the high, prohibitive costs of medicines enabled by the existence of patents. Patents grant the right holder a monopoly on the patented pharmaceutical for at least 20 years from the date of filing of the patent application, thereby curtailing competition by giving the patent holder freedom to set prices, which in many instances is simply unaffordable to persons who need the medicines.
Wisdom of the Ages or Dead-Hand Control? Patentable Subject Matter for Diagnostic Methods After In Re Bilski – In 1980, the Supreme Court gave a reassuring signal to the then-nascent biotechnology industry about the availability of patent protection for the fruits of its research when it upheld the patentability of a genetically modified living organism in Diamond v. Chakrabarty. Twenty-five years later, the Court seemed poised to reexamine the limits of patentable subject matter for advances in the life sciences when it granted certiorari in Laboratory Corporation v. Metabolite. But the Federal Circuit had not addressed the patentable subject matter issue in Laboratory Corporation, and the Court ultimately dismissed the certiorari p etition as improvidently granted. Five years later, two pending cases in which the issue of patentable subject matter has been fully litigated in the lower courts provide opportunities for the Court to resolve some of the uncertainties exposed in Laboratory Corporation.

November 24, 2014

Federal Circuit Reinvigorates “Original Patent” Requirement of 35 U.S.C. § 251 For Reissue Patents – On November 17, 2014, the Court of Appeals for the Federal Circuit, inAntares Pharma, Inc. v. medac Pharma Inc. and medac GmbH, ruled in favor of Ropes & Gray client Medac and breathed new life into the “original patent” requirement of 35 U.S.C. § 251 for reissue claims. Citing to Supreme Court cases dating back more than 150 years, the Federal Circuit clarified the standard for meeting the original patent requirement, finding that hints, suggestions and indications in the original patent’s specification are insufficient. Rather, the original patent’s “specification must clearly and unequivocally disclose the newly claimed invention as a separate invention.” The decision is likely to have a significant impact on the prosecution and litigation of reissue claims.
Federal Circuit further defines what types of software may be patentable – The Ultramercial decision is one of the more elucidating software patent decisions since the Supreme Court’s June 19, 2014 Alice v. CLS Bank decision. The Federal Circuit applied the two-part test from Aliceand found Ultramercial’s software patent claims recite unpatentable subject matter. Ruling on an appeal of a granted motion to dismiss, the Federal Circuit applied the Alice test, holding that software patent claims are unpatentable if they (1) recite an abstract idea; and (2) do so without claiming “something more” that transforms “the nature of the claim into a patent-eligible application.” Of particular significance is that the Federal Circuit had previously held Ultramercial’s claims to constitute patentable subject matter – twice. Both times, Hulu appealed to the Supreme Court but the case was subsequently remanded to the Federal Circuit.
Obviousness type double patenting and the Hatch-Waxman Act – Obviousness type double patenting (ODP), or non-statutory double patenting, is a judicially created doctrine meant to prevent a party from extending an earlier commonly owned patent’s term by claiming patentably indistinct subject matter through claims in a later patent. An ODP rejection of the second patent application with indistinct patentable claims can be overcome by filing a terminal disclaimer as long as both patents are commonly owned or a joint research agreement exists for both patents. Absent these factors, a terminal disclaimer will not overcome an ODP rejection even if there is a common inventor. A terminal disclaimer disclaims the patent term of the later issued patent that extends beyond the term of the earlier expiring patent. Reissue proceedings cannot be used to withdraw a terminal disclaimer from an already expired issued patent. Nor can the reissue of a patent cure an improper terminal disclaimer. Patent term adjustment extends the term of a patent to accommodate any delay caused by the USPTO during the patent’s prosecution. Filing a terminal disclaimer could cause any patent term adjustment to be lost. However, the right to a patent term extension under 35 U.S.C. § 156 based on the Hatch-Waxman Act is not lost by filing a terminal disclaimer.
Federal Circuit Patent Bulletin: Versata Software, Inc. v. Callidus Software, Inc – On November 20, 2014, in Versata Software, Inc. v. Callidus Software, Inc., the U.S. Court of Appeals for the Federal Circuit (Chen,* Mayer, Linn) reversed and remanded the district court’s denial of a stay pending U.S. Patent and Trademark Office (USPTO) covered business method review of U.S. Patents No. 7,904,326, No. 7,908,304, and No. 7,958,024, which related to the management and tracking of sales information by a financial services company. Takeaway: “The correct test [for assessing the burden-of-litigation factor regarding the propriety of a district court stay pending USPTO covered business method review] is one that focuses prospectively on the impact of the stay on the litigation, not on the past actions of the parties.”
The Promise and Perils of Strategic Publication to Create Prior Art: A Response to Professor Parchomovsky – In a provocative recent article in the Michigan Law Review, Professor Gideon Parchomovsky observes that a firm racing with a competitor to make a patentable invention might find it strategically advantageous to publish interim research results rather than risk losing a patent race. This strategy exploits legal rules limiting patent protection to technological advances that are new and “nonobvious” in light of the “prior art” or preexisting knowledge in the field. By publishing research results, a firm adds to the prior art and thereby limits what may be patented in the future. Parchomovsky posits that, before it is able to claim a patentable invention of its own, a firm might have sufficient information to publish results that would raise the threshold for patentability enough to preclude the issuance of a patent to its rival. A firm that believes a rival is likely to complete an invention first might therefore try to defeat the rival’s patent prospects through publication, leaving both firms free to compete in the market for the unpatented invention. Otherwise, the firm that wins the race could use the patent to exclude the lagging firm from the market entirely. This “spoiler” strategy, according to Parchomovsky, “explains the otherwise peculiar practice of commercial firms that routinely publish research results in scientific and technological journals.”

November 21, 2014

SDI Technologies, Inc. v. Bose Corp.: Final Written Decision IPR2013-00350 – In its Final Written Decision, the Board found that Petitioner had established by a preponderance of the evidence that all challenged claims are unpatentable. The ‘682 patent “generally relates to audio systems for reproducing sound from computer files and computer network radio stations.” Turning to claim construction, the Board stated that claims in an unexpired patent are interpreted according to their broadest reasonable construction. The Board then addressed two disputed constructions for the terms “audio signal processing circuitry,” recited in claims 1 and 28; and “assemblages” and “metadata,” recited in claims 12–17, 39–44, 62, 63, 67–70, and 76. Takeaway: The fact that alternative combinations may be suggested by the prior art does not necessarily indicate a teaching away, even if those alternatives are superior to the combination proposed in the petition.
Post-Alice Federal Circuit Finds Internet Advertising Method to Not Be Patent Eligible – Citing the Supreme Court of the United States’ Spring 2014 decision in Alice Corp. v. CLS Bank, the U.S. Court of Appeals for the Federal Circuit reversed itself and concluded that a claimed method for distributing online media to consumers by having the consumer first watch a paid advertisement is an abstract idea and not patent-eligible subject matter under 35 U.S.C. § 101. Ultramercial, LLC v. Hulu, LLC, Case No. 10-1544 (Fed. Cir. June 21, 2013) (Lourie, J.) (Mayer, J., concurring). This is the third time this case has been before the Federal Circuit.
Federal Circuit Trims Sanction Award In Prison-Friendly Flexible Toothbrush Suit – The Federal Circuit Nov. 13 affirmed-in-part, vacated-in-part and remanded a district court’s sanction award against defendants and their counsel in a dispute that began as a patent infringement action over flexible toothbrushes. The district court cited four grounds for exercising its discretion under Federal Rule of Civil Procedure 37 to strike the defendant’s pleadings—including its answer and affirmative defenses—and enter judgment in favor of the plaintiff, Loops LLC. Loops was awarded $54,718.85 in patent infringement damages for Phoenix Trading Inc.’s infringement of its patent related to a flexible-handles toothbrush designed for safe use in prison. That award, however, was not on appeal. Instead, the Federal Circuit’s review was on whether the district court abused its discretion by striking the pleadings and ordering Phoenix, its president, Wendy Hemming, and their attorney, Rick Klingbeil, to pay $200,926 in attorneys’ fees and costs.
Questioning ‘Cariou’ Rationale on Transformative Fair Use – On Sept. 15, 2014, the U.S. Court of Appeals for the Seventh Circuit in Kienitz v. Sconnie Nation, 766 F.3d 756 (7th Cir. 2014), delivered a rebuff to the U.S. Court of Appeals for the Second Circuit’s controversial copyright “fair use” holding in Cariou v. Prince, 714 F.3d 694 (2d Cir. 2013). The Cariou court had taken the most striking position to date on the concept of “transformative use” in determining whether the “fair use” defense to copyright infringement applies. It held that where an author has appropriated the copyrighted work of another but “transformed” it into something new and distinct, there is no infringement of the original author’s work. As the Kienitz court suggested, and as this article will discuss, the Cariou holding diverges substantially from the language of the federal Copyright Act of 1976, 17 U.S.C. §§101-810, expands the reach of the precedents on which the holding relies, and, as the Seventh Circuit noted, directly conflicts with one of the exclusive rights granted to a copyright holder—the right to make derivative works.

Obvious to Whom? Evaluating Inventions from the Perspective of PHOSITA – Feature Journal Article -In this Article, the author considers the possibility of giving the USPTO input from currently active technological practitioners in evaluating the obviousness of claimed inventions. Such input could potentially serve three useful functions. First, it could improve the accuracy of USPTO decision making by providing access to the perspective of actual practitioners as to the obviousness of inventions from the perspective of the hypothetical PHOSITA. Second, it could help the USPTO document the evidentiary basis for rejections that rest in part upon tacit knowledge within technological communities. Third, it could provide a quality control mechanism that would improve the credibility of USPTO decisions as to what is obvious. This mechanism should provide timely advice in a cost-effective manner while minimizing risks of bias and conflict of interest.

November 20, 2014

Patents In, Garbage Out? When machine translation mangles the prior art – Voltaire had it right when he said: “Woe to the makers of literal translations, who by rendering every word weaken the meaning.” Was he foreseeing the unfortunate results of feeding a Japanese specification through Google Translate? Probably not, but he had a point nonetheless. EPO decision T 1343/12 concerns a machine translation of a prior art Japanese reference used in an inventive step objection. The Board, examining the ambiguous translation, was unable to reach a conclusion as to its meaning, and remitted the case back to the Examining Division “for re-consideration of the issue of inventive step in the light of a certified translation of D1.” What intrigued the IPKat was that the decision is silent on who has the legal responsibility of procuring this certified translation and who is expected to pay for it.
Leading GOP Senator Says More Patent Reform on the Horizon – Thought Democrats and Republicans on Capitol Hill were through working with each other? Not so fast. Patent reform, it seems, is still an issue that can bridge our nation’s great partisan divide. On Thursday, Senate Minority Whip John Cornyn (R., Texas), the Senate’s number two Republican behind soon-to-be majority leader Mitch McConnell (R, Ky.), said that lawmakers are “absolutely” going to pass a patent-reform bill next year when Republicans take control, according to The Hill. The bill will likely add new responsibilities on plaintiffs filing patent-infringement suits. Among the possible additions: a provision requiring plaintiffs who lose their infringement lawsuits to pay the defendants’ litigation costs.
RPX, Jack Daniel’s, Oracle, Kuwait: Intellectual Property – Startup companies are being offered insurance policies to protect them against patent trolls; Tennessee Distillers Say State’s ‘Whiskey’ Definition Unfair; A federal court in San Francisco has refused to dismiss antitrust claims a group of computer-support companies raised against Oracle America Inc. in response to Oracle’s copyright-infringement suit; and Kuwait has been moved to the U.S. Trade Representative’s priority watch list because of concerns about that country’s copyright laws, the office said in a statement.
Fifth Circuit Hands WWE Victory in Effort to Body Slam Fly-by-Night Vendors – The WWE might not be able to identify in advance vendors hawking counterfeit goods who show up at live events, but it can easily identify such fly-by-night operations because it has shown that it does not license third parties to sell branded goods, such as T-shirts and caps, the U.S. Court of Appeals for the Fifth Circuit ruled Nov. 4. Vacating a federal district court’s denial of the WWE’s request for an ex parte order for seizure of counterfeit goods, the court said that the WWE had met its burden under federal law to adequately identify parties alleged to be in possession of counterfeit goods.
Is IP Law Modernization Possible? Assessing Approaches in ACTA, SOPA, and Bill C-11 – Featured Journal Article – In an increasingly digital age, countries face the difficult and nuanced task of regulating evolving information-sharing platforms. New technologies pose challenges for lawmakers, who must hold varying interests in balance: the need for national protection and security; the prevention of piracy and copyright violations; and maintaining a respect for freedoms of speech and information exchange.

November 19, 2014

Federal Circuit: Novelty in Implementation of an Abstract Idea Insufficient to Overcome Alice – Following Alice Corp., the Federal Circuit has now flipped its prior two rulings in the Ultramercial case — finding this timethat the computerized business method patent lacks patent eligibility. Both prior Federal Circuit decisions in favor of patent eligibility had been vacated by the Supreme Court without opinion except with orders to consider Mayo v. Prometheus and Alice Corp v CLS Bank respectively. This decision offers a strong signal from the Federal Circuit that the court is now understanding what the Supreme Court meant in its recent quartet of Bilski, Mayo, Myriad, andAlice and that the court will support the 101 eligibility decisions being laid-down by the lower courts and the Patent Office.
Patent Trolls are NOT the Biggest Barrier to Innovation – A recently published survey by The Atlantic asked a panel of 50 Silicon Valley insiders a variety of questions ranging from what is the most exciting tech start-up at the moment to which tech company is most overvalued. One question in particular was quite intriguing: What is the biggest barrier to innovation in the United States? You might be surprised by the answer. According to this poll the biggest barriers to innovation in the United States are, in order: Government regulation/bureaucracy 20%, Immigration policies 16%, Education 14%, Talent shortage 10%, Lack of diversity among tech executives 10%, The need for patent reform 8%, and Lack of investment 6%. This survey shows what those in the industry have long known — patent trolls and the need for patent reform are NOT the biggest problems facing the high tech industry in the United States. In fact, 92% of respondents feel that there are other things that are more concerning and a bigger barrier to innovation.
Contract Corner: Considering Rights to Use Aggregated Data in Service Relationships – Big Data: It is in the news every day, and industry researchers can’t say enough about the potential value of data and predictions for the data analytics market. So it seems like a natural progression that the rights to use aggregated, de-identified data provided or generated in connection with service relationships are in the spotlight. Procurement outsourcers want to leverage the cost and payment data they receive from suppliers on behalf of clients to benchmark what is “market.” Human resources service providers want to leverage data regarding employee behavior and acceptability (such as with self-help) to enhance their services and improve the user experience. Information technology service providers want to aggregate performance data, including service-level commitments, to demonstrate and market their best-in-breed systems and processes. So, what do customers need to think about when a vendor requests a provision stating that it can use the customer’s data in an aggregated, de-identified form? Set forth below are five key questions for customers to consider.
Tips for Writing Effective PTAB Appeals Briefs – Your patent application has been rejected – again. You are ready to file an appeal brief with the Patent Trial and Appeal Board (PTAB) and tell three Administrative Patent Judges that the examiner is wrong. The rules for filing an appeal brief are provided in 37 C.F.R. § 41.37, including the brief’s required content. Adhering to these rules is the first step in writing an appeal brief and will ensure that you avoid a notice of non-compliance requiring resubmission of the brief. As a second step, making your appeal brief as clear and persuasive as possible will move you toward PTAB victory. To this end, the U.S. Patent and Trademark Office (USPTO) provides “Practice Tips for Writing Effective Appeal Briefs” at their website. The authors elaborate on some of these tips – and more – below to help make your brief effective.
Copyright, Fair Use and Author’s Rights II (October/November 2014) – Slide excerpts from University of Nebraska-Lincoln presentation by faculty members Paul Royster and Sue Gardner. The presentation reviews copyright law, fair use, and author’s rights, with strategic advice concerning when to avoid disputes and when to fight back.

November 18, 2014

Trademark Assignments: Keeping it Valid – After a trademark achieves federal registration, ownership of the mark may change hands for a variety of reasons. When a trademark owner transfers their ownership in a particular mark to someone else, it is called an assignment. Generally, for an assignment of a trademark to be valid, the assignment must also include the ‘goodwill’ associated with the mark (goodwill is an intangible asset that refers to the reputation and recognition of the mark among consumers). If the assignment of a trademark includes the mark’s goodwill and is otherwise legal, the assignee gains whatever rights the assignor had in the mark. Importantly, this includes the mark’s priority date, which has implications for protecting the mark from potential infringers going forward.
USPTO Provides Update on Status of Revised Myriad-Mayo Guidance – During a session of the Biotechnology Industry Organization (BIO) Intellectual Property Counsels Committee (IPCC) fall conference, which took place this week in Nashville, TN, the U.S. Patent and Trademark Office provided a status update regarding forthcoming revisions to the Myriad-Mayo Guidance. Once again representing the Office was June Cohan, Legal Advisor with the USPTO’s Office of Patent Legal Administration. Ms. Cohan’s latest presentation marked the fourth time in the past eight months that she has addressed the Guidance at a BIO event (she previously presented on the Guidance in April at the BIO IPCC spring conference in Palm Springs, CA, in June at the BIO International Convention in San Diego, CA, and in September at the BIO IP & Diagnostics symposium in Alexandria, VA). Also participating in the session on “Protecting Products of Nature,” were Dr. Fangli Chen of Choate Hall & Stewart LLP (who moderated the session); Henry Gu, Director, Intellectual Counsel for Cubist Pharmaceuticals; Dr. Steve Bossone, Vice-President of Intellectual Property for Alnylam Pharmaceuticals; and Hugh Goodfellow of Carpmaels & Ransford LLP.
25 Years Since Galileo: A Recent Look at NASA Technologies – October 18 marks the 25th anniversary of the 1989 launching of the Galileo spacecraft by the National Aeronautics and Space Administration, a mission which focused on the study of the planet Jupiter and its moons. Galileo provided NASA researchers with data leading to the discovery of the ocean on Europa, one of Jupiter’s moons, and provided the first ever recorded images of a comet striking a planet before the mission was terminated on September 21, 2003. Data collected by the Galileo spacecraft is still leading to a better understanding of our solar system, as researchers recently announced evidence of shifting plate tectonics on Europa, the first time this has been witnessed anywhere other than earth. For decades, the operations of NASA have been incredibly innovative and inspirational to inventors of all kinds. The agency is still involved in various programs for scientific research, especially involving Mars. NASA recently announced a partnership with the Indian Space Research Organization (ISRO) to work collaboratively on future missions to explore Mars. NASA is also moving towards a scheduled December launch date for an unmanned mission involving the Orion capsule to test its crew safety systems; Orion could be launched with astronauts aboard by 2021.
Derivation: Possession Versus Conception – The Patent Trial and Appeal Board (PTAB) denied three petitions to institute derivation proceedings, sought by Catapult Innovations against three patent applications assigned to adidas AG, finding that Catapult failed to establish a prior “conception.” DER2014-00002, Paper 19 (July 18, 2014); DER2014-00005, Paper 13 (July 18, 2014); DER2014-00006, Paper 19 (July 18, 2014). Catapult’s derivation petitions were the first to be filed under 37 C.F.R. § 42.405. To date, no derivation proceedings have been instituted. While U.S. patent law is now a first-inventor-to-file system, derivation proceedings under the American Invents Act (AIA) provide a mechanism to ensure that the first person to file a patent application is actually the true inventor. Here, Catapult alleged that adidas AG’s patent application claims were derived from a two-day presentation and demonstration of an athletic activity monitoring system made to AWSE, a wholly-owned subsidiary of adidas AG.
Overlapping Intellectual Property Doctrines: Election of Rights versus Selection of Remedies – Featured Journal Article – Overlaps exist across various doctrines in federal intellectual property law. Software can be protected under both copyright law and patent law; logos can be protected under both copyright law and trademark law. Design patents provide a particular opportunity to consider the issue of overlap, as an industrial design that qualifies for design patent protection might also, in particular circumstances, qualify for copyright protection as well as function as protectable trade dress. When an overlap issue arises—that is, when an intellectual property rights holder asserts rights under more than one doctrine—the question then becomes how courts should respond. One response, of course, is that courts should do nothing, on the theory that the doctrines developed in a way that permit such overlapping rights, and so the courts should continue to enforce them. The opposing response is to argue that overlapping rights make it difficult for intellectual property users to determine the scope of another’s rights, particularly when those rights have different terms or limitations, and so the courts should require intellectual property owners to choose the rights they want enforced at the outset.

November 17, 2014

Corning Optical Communications RF, LLC v. PPC Broadband, Inc., Order Providing Guidance on Motion to Amend Claims IPR2014-00441 – In its Order, the Board provided guidance to Patent Owner concerning the requirements of a motion to amend. It also authorized Patent Owner to place its proposed substitute claims in an appendix, such that it does not count toward the 15-page limit for a motion to amend claims. The Board began by reminding Patent Owner that a motion to amend claims only may cancel claims or propose substitute claims. The request to cancel claims will not be regarded as contingent, whereas the request to substitute claims is always contingent upon the corresponding original claim being determined unpatentable by the Board or cancelled by Patent Owner. Takeaway: With authorization, proposed substitute claims may be filed in an appendix that does not count toward the 15-page limit for a motion to amend claims.
Patent Ownership and Standing: Legal Title vs Effective Title – The court here holds that the legal owner of the patent has no standing to be a co-plaintiff with the exclusive licensee. When all substantial rights in the patent are transferred to an exclusive licensee that entity becomes the effective owner and the license is an effective assignment. The author argues that the decision here is an incorrect results-oriented decision in reaction to the plaintiffs’ too-clever pre-filing actions. The ownership and control history of U.S. Patent No. 7,756,129 is fairly interesting, if also obscuer. The “personal area networking” patent was originally owned by the innovative company BBN, but by 2009 Azure Networks was the owner. Missing from the USPTO records is the chain-of-title from BBN to Azue. In its opinion here, the court alluded to the chain by mentioning that the patent has “passed through many hands of ownership.”
Extortionist Demand Letters are Wrecking Public Confidence in the U.S. Patent System – Adam Carolla, one of the most popular podcasters in the U.S., is sued by a patent troll. The story goes viral. Across the country, state Attorneys General are using consumer protection laws to guard their small businesses from the predacious patent trolls. And here’s something previously unthinkable: the President of the United States, in the 2014 State of the Union address (“It’s the country’s most valuable political real estate,” noted one D.C. veteran), urged Congress to “pass a patent reform bill that allows our businesses to stay focused on innovation, not costly and needless litigation.” The greatest long-term threat to the U.S. patent system does not come from its professional opponents – those large businesses and their political allies who stand to profit from enfeebled patent rights. A deeper harm is caused by unscrupulous patent trolls who use extortionist “demand letters” to victimize small businesses. This practice, we believe, is wrecking public confidence in the U.S. patent system – and by extension, profoundly weakening the heretofore bedrock belief in the great economic benefits conferred by patent-protected inventions.
Carl Zeiss SMT GmbH v. Nikon Corporation, Final Written Decision IPR2013-00362 – In its Final Written Decision, the Board found that Petitioner had established by a preponderance of the evidence that all challenged claims of the ‘575 patent are unpatentable. The Board also denied Petitioner’s Motion to Exclude and dismissed Patent Owner’s Motion to Exclude. The ‘575 patent “relates to a catadioptric projection optical system, exposure apparatus, and exposure method and, more particularly, to a high-resolution catadioptric projection optical system suitable for use in production of semiconductor devices and liquid-crystal display devices by photolithography.” Takeaway: Arguing a high level of skill in the art, even in cases involving complicated technology, may not be successful, and arguments based on that higher level of skill in the art may similarly fail.
The Territorial Referendum – Featured Journal Article – Many Internet users have encountered geoblocking tools – tools that prevent users from accessing certain content on the Internet based on the location from which the users are connecting to the Internet. Because at least some users want to access such content, they turn to tools that enable them to evade geoblocking, to appear on the Internet as if they were located in another location, and to access the content that is available in this other location. So far these activities appear to be under the radar of intellectual property (“IP”) owners, perhaps because geoblocking evasion by users for the purposes of accessing IP-protected content can be viewed much like non-infringing de minimis importation in small numbers for non-commercial use (TRIPS, Art. 60).This article points out that there are signs of substantial user desire to access content that is not available in the user’s location; this desire is evidenced, for example, by the recent proliferation of the numbers of and commercial success of space-shifting services that have advertised and/or have been used to access territorially-restricted television content from any place in the world (e.g., ManekiTV, Slingbox). It is possible that with more territorial restrictions imposed on content on the Internet and with courts finding at least some of the space-shifting services infringing (e.g., TVCatchup, Aereo) users will turn to geoblocking evasion even more than they have already. The article discusses the effects that such increased geoblocking evasion might have on the territoriality of IP rights – or the effects on at least some of the implications of the territoriality.

November 13, 2014

Judge Kara Farnandez Stoll – The White House has announced the nomination of Kara Farnandez Stoll to fill the empty seat on the Federal Circuit Bench left by Judge Rader’s retirement in June 2014. Stoll is well known in the patent law community and is a litigator at Finnegan Henderson in Washington DC. She also worked as a patent examiner (electrical engineering and software) for six years prior to graduating from law school. In her 16-years at Finnegan, Stoll’s focus has been on Federal Circuit patent law and has represented parties on all sides of the patent debate.
Nautilus v. Biosig Instruments case illustrates tension between Supreme Court, Federal Circuit – The Nautilus v. Biosig Instruments case is now back in the hands of the U.S. Court of Appeals for the Federal Circuit after the Supreme Court rejected the Federal Circuit’s definiteness, relying on a standard of “reasonable certainty.” In recent weeks, a panel of Federal Circuit judges addressed several patent-related issues during oral arguments on Nautilus v. Biosig. Much of the questioning got into what the Supreme Court was asking the Federal Circuit to do with the case. The case is about Biosig’s heart rate monitor. In 2013, the Federal Circuit overruled a summary judgment on the Biosig patent case. The Supreme Court heard the case, and then reversed and rejected the “insolubly ambiguous” patent standard.
Appeals court to revisit controversial YouTube video takedown – An appeals court in the U.S. is reviewing a February decision ordering Google to pull down from YouTube the controversial “Innocence of Muslims” video that sparked off violence in many countries in 2012. In a 2-1 decision, the U.S. Court of Appeals for the Ninth Circuit had ruled that actress Cindy Lee Garcia, who was shown in the anti-Islam movie trailer, had established the possibility that irreparable harm would result in the absence of an injunction, as she was subject to death threats and took action as soon as she began receiving the threats.
“Sherlock’s No Longer Your Copyright!”, Says US Supreme Court – On November 3, 2014, it has been made clear by the US Supreme Court that Sherlock Holmes was no longer the estate’s monopoly, but belonged to the world. In July, 2014, an Emergency Petition filed by the Conan Doyle Estate Ltd., to block the publication of a new collection of stories based on Sir Arthur Conan Doyle’s detective, Sherlock Holmes, but they did not receive the estate fee for using literary, merchandising and advertising rights of the works by Sherlock Holmes. It was then decided by the US Court of Appeals for the Seventh Circuit that Doyle’s characters were in the public domain and therefore, the Author, Mr. Klinger, need not get the estate’s permission or even pay any fee to publish his upcoming collection.
Regulating Three-Dimensional Printing: The Converging Worlds of Bits and Atoms – Featured Journal Article – This Article represents the first proposal for constructing an integrated regulatory regime to govern 3D printing and is guided by a rich literature concerning regulation and governance. The Article is further informed by a truth made manifest over years of technological progress: Society never fully understands in advance how a disruptive technology will alter the status quo. Leading thinkers in the 1960s could not fathom the uses a “home” computer would have—they thought it might be useful for recipe management. A 1980 McKinsey report advised that mobile phones would have little widespread impact. This Article argues that the uncertain but promising state of 3D printing technology necessitates a flexible and iterative regulatory response.

November 13, 2014

Congressional Oversight of the USPTO – With the America Invents Act of 2011 (AIA), Congress handed the USPTO a central role in implementing major legislative patent reforms. Those include both designing the structure and procedure for post-issuance review and also taking the first steps at interpreting the new rules of patentability under the first-to-invent system. For the past few decades, it has been the Federal Circuit’s assumed role to monitor and moderate USPTO activity and decision-making. However, the Supreme Court’s recent repeated rejections of Federal Circuit decisions has significantly reduced that court’s perceived strength. Further, the express grant of authority in some areas severely limit the Federal Circuit’s review capabilities. These factors come together to suggest that the PTO is now largely operating without direct checks on its behavior outside of the Administration.
Supreme Court May Decide if Good Faith is Sufficient to Avoid Induced Infringement Claim – When the U.S. Solicitor General (SG) responds to a request from the Supreme Court for the SG’s views as to whether case is important enough to be heard by the Supreme Court, the Court has followed the SG’s recommendation almost 80% of the time. Recently, the SG recommended that the Supreme Court grant certiorari review in Commil USA, LLC v. Cisco Systems, Inc., 720 F.3d 1361 (Fed. Cir. 2013), on the issue of whether a defendant’s good-faith belief that a patent is invalid is a defense to a claim of inducing infringement. Accordingly, chances are good that the Supreme Court will review this issue.
Amgen/Sandoz Disputes Will Clarify BPCIA (Biologics Price Competition and Innovation Act) Issues – In a related post (“No Avoiding BPCIA For Biosimilars: No Patent Declaratory Judgment Before Biosimilars Application is Filed”), the authors discussed the decision of the U.S. District Court for the Northern District of California holding that a biosimilars applicant could not avoid the BPCIA patent exchange process by filing a patent declaratory judgment prior to filing its 351(k) application. That case – Sandoz, Inc. v. Amgen Inc. – is on appeal to U.S. Court of Appeals for the Federal Circuit. (Appeal docketed as No. 14-1693, Fed. Cir., December 13, 2013). While that case, involving Amgen’s ENBREL® product, will decide the issue of whether BCPIA patent process can be avoided by filing a declaratory judgment prior to filing of the 351(k) application, another dispute has arisen between Sandoz and Amgen as to whether the patent certification and exchange process in Section 351(l)(2) of the Public Health Service Act is mandatory or permissive. How the courts deal with the issues addressed in the case – Can a declaratory judgment of patent non-infringement be filed prior to filing a 351(k) application? and Are the application and patent exchange procedures in 351(l) be mandatory or not? – will go a long way to clarify the resolution of patent disputes between sponsors and biosimilar applicants going forward.
Computer Scientists Petition Supreme Court Over API Copyright – The Electronic Frontier Foundation has filed a brief on behalf of 77 computer scientists urging the US Supreme Court of the United States to overturn a finding that APIs are copyrightable. The request is to review the decision handed down by the U.S. Court of Appeals for the Federal Circuit in May in the Oracle versus Google lawsuit, see Oracle Wins Copyright Appeal. It comes in the form of an amicus brief in support of a recent petition by Google to reverse the ruling that Oracle’s Java API’s were protected by copyright.
Hindsight Reasoning: What a Look at Past Innovation Under the Supreme Court’s new Alice Patent Eligibility Standards Reveals – Featured Journal Article – At the birth of the computer era, a trilogy of Supreme Court decisions dropped the ball on an intellectually honest accounting of patent eligible subject matter for innovations related to software, resulting in a future path paved with legal fictions. The recent Supreme Court decision in CLS Bank Int’l v. Alice Corp. Pty. Ltd., 573 U.S. ___, 134 S.Ct. 2347 (2014) not only perpetuates this path, it digresses into pre-1952 judicial subterfuge. As legal commentators and the courts continue legal gymnastics to reconcile these decisions and draw guidance for future analysis, a deeper look uncovers the relevant cases are simply irreconcilable. For patent practitioners this situation is particularly troublesome because – just as with the Court’s pre-1952 standards – the Court’s newly enumerated standard for patent eligibility is essentially meaningless.

November 12, 2014

In re Cuozzo Speed Technologies LLC Federal Circuit Argument — The Patent Office Asks to Have Its Cake and Eat It Too – Last week, the Federal Circuit heard the first oral argument for the first appeal of an inter partes review (“IPR”) final written decision for the first IPR ever filed (IPR2012-00001). The IPR case caption was Garmin USA, Inc. (Petitioner) v. Cuozzo Speed Technologies LLC (Patent Owner), but the appeal was fashioned as “In re Cuozzo Speed Technologies LLC” because Garmin withdrew from the appeal. As a result, the Patent Office intervened to oppose Cuozzo’s appeal. Of course, the specific facts and argument of this case are of the utmost importance to the patent owner. However, it is the positions advocated by USPTO Solicitor that can be of the most use to any other party finding itself in this position. The Office advanced three arguments at the hearing. First, the Patent Office asserted that the decision to institute is both unappealable and unreviewable — even if that decision goes beyond the boundaries set by Congress. Second, the Patent Office defended its use of the broadest reasonable interpretation (BRI) standard as consistent with the legislative history and prior Federal Circuit case law. Finally, the Patent Office explained why the denial of virtually every motion to amend has been proper, even though the patent owner’s ability to do so was anticipated by Congress.
USPTO vs Hyatt: When an Applicant has Too Many Patent Applications – Earlier this year, Gilbert Hyatt sued the USPTO for unreasonably delaying examination of 80 of his pending patent applications — many of which have been pending for decades. See Crouch, Three Generations of Poor Examination are Enough. That case has been transferred from Nevada to Virginia but is otherwise still pending. In its most recent motion to dismiss, the USPTO explained its delay in action — noting that Hyatt has 399 pending patent applications that include a total of over 100,000 claims that apparently all have a pre-URAA (1995) filing date. While the USPTO admits that it stayed prosecution of most of Hyatt’s cases from 2002-2012, it started examining them again in 2013. Because of the many overlapping applications held by a single entity, the USPTO has required Hyatt to “streamline” his applications.
Judge Richard Linn, First and Foremost a Patent Attorney – On December 9, 2014, the Intellectual Property Owners Education Foundation will host one of the best events of the year. Each year at this banquet and awards ceremony the IPO recognizes the National Inventor of the Year, who this year will be Dr. Hugh Herr, the inventor of bionic prosthetic devices. Today, however, the purpose of this article is talk about the recipient of the 2014 Distinguished IP Professional Award – Judge Richard Linn of the United States Court of Appeals for the Federal Circuit.
Alice Kills Machines and Transformations – In the aftermath of Alice v. CLS Bank, patent law has become an uncertain battleground. The Supreme Court killed the machine or transformation (MOT) test in Alice by attempting to lay out a proper analysis for determining patentable subject matter under 35 U.S.C. §101. The Alice opinion fails to provide a new test in place of the MOT test for determining patentable subject matter. Rather to succeed at the onerous task of determining the types of inventions that are now patent eligible, patent practitioners must set aside machines and transformations and become omniscient Transformers themselves.
Patent Attorney Malpractice: Case-Within-A-Case-Within-A-Case – Featured Journal Article – Author offers a “case-within-a-case” methodology to provide a workable means for resolving the federal and state jurisdictional issues in malpractice cases involving patent attorneys. He argues that Federal jurisdiction should not be limited to cases where malpractice plaintiffs are claiming the loss of a favorable judgment in the underlying case (the judgment model).

November 11, 2014

No Collateral Attacks on Stay Decision Pending Completion of CBM Review – Addressing a motion to stay district court litigation pending a covered business method (CBM) review, the U.S. Court of Appeals for the Federal Circuit upheld a lower court’s ruling staying litigation, finding a district court should not review a determination by the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB) that contested claims are more likely than not invalid in the posture of a ruling on a motion to stay. Benefit Funding Sys., LLC v. Advance Amer. Cash Advance Centers Inc., Case Nos. 14-1122; -1124; -1125 (Fed. Cir., Sept. 25, 2014) (Prost, C.J.).
Consider Whether APIs Can Be Copyrighted, Computer Activist Group Urges U.S. Supreme Court – It’s possible the question of whether application programming interfaces (APIs) can be copyrighted may eventually end up in the highest court in the land. The Electronic Frontier Foundation (EFF) reports that it has filed a brief with the Supreme Court of the United States, asking the justices to review a “disastrous” appellate court decision finding that APIs are copyrightable (Oracle v. Google). “That decision, handed down by the U.S. Court of Appeals for the Federal Circuit in May, up-ended decades of settled legal precedent and industry practice,” EFF said in a statement, indicating it has the backing of 77 well-known computer scientists. In October, Google petitioned the Supreme Court to review the case, which it states has implications for technical innovation.
Republican win in Senate breathes life into patent legislation – A Republican takeover of the U.S. Senate has brightened prospects for an effort to fight frivolous patent litigation, although the path to success is far from clear, sources close to the lobbying effort said on Wednesday. The House of Representatives easily passed a bill in December to cut down on abusive litigation brought by patent assertion entities, or “patent trolls”: companies that buy or license patents, then aggressively pursue licensing fees or file infringement lawsuits. That legislation, backed by technology companies like Cisco Systems Inc and Google Inc, stalled in the Senate amid opposition from drug companies and, crucially, lack of backing from Democratic Senate Majority Leader Harry Reid.
Valley Blood Testing Start-up Takes Stab at Rival’s Trademark – Get ready for a big fight over the words “micro” and “nano.” Palo Alto-based medical testing company Theranos Inc. launched a preemptive strike in a trademark spat with rival Becton Dickinson Co. on Monday. Theranos is asking for a declaratory judgment that its use of the name nanotainer for blood collection tubes doesn’t infringing upon Becton Dickinson’s trademark for microtainer. In a sign that Theranos may well be out for blood, the company’s complaint was filed by lawyers at Fenwick & West and Boies, Schiller and Flexner—including David Boies himself.
Apple TV Control, Zulu, Cyanotech: Intellectual Property – A lawyer from Fairfield, California, was ordered to pay $87,835 in attorney fees stemming from an unsuccessful copyright-infringement case; Apple Inc. (AAPL), maker of the iPhone and iPad, was awarded a patent for a wand-like device that can control a television set through gestures; and Zulu Social Aid & Pleasure Club Inc., one of New Orleans’s carnival clubs, sued one of its former associate members for trademark infringement over a Facebook page.

November 7, 2014

Patent Definiteness Requirement Update – The Supreme Court recently “conclude[d] that the Federal Circuit’s formulation, which tolerates some ambiguous claims but not others, does not satisfy the statute’s definiteness requirement.” Nautilus, Inc. v. Biosig Instruments, Inc., No. 13-369 (2014). Instead, the Court concluded that “a patent is invalid for indefiniteness if its claims, read in light of the specification delineating the patent, and the prosecution history, fail to inform, with reasonable certainty, those skilled in the art about the scope of the invention.” Id, at 1.
During Claim Construction, Neither Importing Limitations From Nor Reading Out A Preferred Embodiment Is Proper – In EPOS Technologies Ltd. v. Pegasus Technologies Ltd., No. 13-1330 (Fed. Cir. Sept. 5, 2014), the Federal Circuit vacated the district court’s constructions of four claim terms and the district court’s SJ of non-infringement under the DOE. The Federal Circuit also reversed the district court’s SJ of non-infringement for certain of the patents-in-suit and remanded to the district court. EPOS Technologies Ltd. (“EPOS”) filed suit against Pegasus Technologies Ltd. (“Pegasus”), seeking DJ of non-infringement of U.S. Patent Nos. 6,326,565 (“the ’565 patent”); 6,392,330 (“the ’330 patent”); 6,724,371 (“the ’371 patent”); and 6,841,742 (“the ’742 patent”). Pegasus counterclaimed for infringement of U.S. Patent Nos. 6,266,051 (“the ’051 patent”) and 6,501,461 (“the ’461 patent”). The patents relate to pens that digitize writing and devices for retrofitting writing surfaces so that writing can be digitally captured. After claim construction, EPOS moved for SJ of invalidity and non-infringement. The district court granted the motion as to non-infringement and declined to address invalidity. Pegasus appealed the district court’s construction of four claim terms and SJ of non-infringement.
Email Controversy Leads to Reprimand of Weil Gotshal Patent Lawyer – The nation’s leading patent court on Wednesday ordered a “public reprimand” of a prominent patent lawyer, in a coda to a bizarre saga that earlier this year led the court’s ranking judge to give up his post. In a 14-page order, the 11 active judges of the U.S. Court of Appeals for the Federal Circuit reprimanded Edward Reines of Weil, Gotshal & Manges LLP for attempting to solicit clients with a laudatory email sent to him in March by Randall Rader, who was then chief judge of the court.
The Orphan and the Unknown Soldier re: Orphan Copyright Works – As noted in various outlets in the past few days, museums in the UK are drawing the public’s attention to the problem of orphan works and the need for copyright reform to address the problem. Orphan works are copyrighted works whose owners cannot be located by a reasonably diligent search. This creates a problem for parties wishing to reproduce such works. If the parties cannot locate the works’ owners, then they can’t obtain the necessary authorization to absolve themselves of potential liability. As a result, many orphan works go unpublished, waiting in darkened archives for the copyrights in those works to expire. The orphan works problem is causing particular consternation for a group of museums in the UK, who are seeking to open their archives to the public in commemoration of the 100th anniversary since the outbreak of First World War.
Inter Partes Reveiw by the Numbers – In a new essay, the authors perform a statistical analysis of every IPR petition filed before April 2014, asking whether the new procedure is accomplishing its original goal of serving as a quick, efficient alternative to defending patent suits filed in federal court. The numbers suggest that inter partes review will be considerably more potent than inter partes reexamination and, moreover, will have a substantial impact on co-pending litigation, particularly suits filed by NPEs.
Power and Governance in Patent Pools – Featured Journal Article – Power and Governance in Patent Pools – The recent influx of patent pools, research consortia, and similar cooperative groups led by companies at the vanguard of American innovation has raised a pressing question: How does collective action influence the incentive to innovate? This question hinges on how patent pools are internally governed — a topic that has not been deeply examined by legal scholars. Through an original study of fifty-two private agreements, this Article pulls back the veil on patent licensing collectives to examine whether such organizations are designed to encourage long-term innovation.

November 6, 2014

Athena Automation Ltd. v. Husky Injection Molding Systems Ltd.: Final Written Decision IPR2013-00290 – In its Final Written Decision, the Board found that claims 1, 4-16, 18, and 20-22 of the ’536 are unpatenable, Petitioner had not shown that claims 2, 3, 17, or 19 are unpatentable, and denied Patent Owner’s Motion to Amend and Motion to Exclude. The ’536 Patent relates to injection molding machines that inject, under pressure, injectable molding material into a mold cavity. Takeaway: In a motion to amend, it is not the petitioner’s burden to prove that the proposed claims are anticipated by or rendered obvious by the prior art. Instead, it is the patent owner’s burden to show persuasive evidence that the proposed claims are not anticipated by or rendered obvious by the prior art.
Patenting vs Secrecy: Impact on Company Financing – Many companies are now looking more toward trade-secrecy as well as confidentiality and non-compete protections in reaction to both (1) shifts in patent law that have incrementally weakened the power of patent rights and also (2) to the potential creation of a national trade secret cause of action under the new Republican congress. A major public policy difference between patents and trade secrets is that patents require full public disclosure prior to obtaining rights while trade-secrecy requires just the opposite – affirmative steps to keep the information from the public. Most discussions of the differences focuses on the public value of disclosure on a macro-economic scale. However, an interesting new article by a group of economists at Georgia Tech (N. Dass) and Rutgers (V. Nanda and S. Xiao) look instead to the micro-economic impact — asking whether a relative shift in legal rights toward either patents or trade secrecy impacts the innovative companies.
Ultratec, Inc. v. CaptionCall, LLC: Final Written DecisionIPR2013-00288 – In its Final Written Decision, the Board found that Petitioner had established by a preponderance of the evidence that the challenged claims are unpatentable. Prior to the oral hearing, Patent Owner disclaimed challenged claims 1, 2, 7, and 9; therefore, the Final Written Decision did not address these claims. The ‘801 patent “relates to correcting errors within a text caption system used to facilitate hearing-impaired communication.” The proceeding was instituted with two grounds of unpatentability: (1) claims 1, 2, 7, and 9 as anticipated by Engelke 1; and (2) claims 1, 3-6, and 8-29 as obvious over Engelke 2 and Cervantes. The first ground was not addressed because Patent Owner had disclaimed those challenged claims. Takeaway: If a proposed modification to the prior art in an obviousness ground of unpatentability would result in the elimination of a feature disclosed in the prior art, such a combination may still have been obvious, particularly where that feature is described as being an alternative feature.
Gutter Battle Reignites With New Action – In the latest salvo exchanged between two competing drainage product companies, Invisaflow, LLC (“Invisaflow”), based in Alpharetta, Georgia, filed a complaint in the Northern District of Georgia against competitors Euramax International, Inc. and Euramax Holdings, Inc. (collectively “Euramax”), both based in Norcross, Georgia, alleging that Euramax infringes its patent directed to gutter downspout extension attachments. Invisaflow asserts U.S. Patent No. 8,556,195 (“the ‘195 Patent”), entitled “Low Profile Attachment For Emitting Water,” which issued on October 15, 2013. As reported here, in August 2012 Invisaflow filed a similar action based on a parent patent of the ‘195 Patent, U.S. Patent No. 8,251,302. Invisaflow voluntarily dismissed that action in November 2012 (see here). The complaint alleges that Euramax’s “Extend-A-Spout v2 Low Profile Drainage System” product infringes the ‘195 Patent, and further alleges that Invisaflow met with Euramax on May 22, 2014, to notify Euramax of its infringement and requested that Euramax cease and desist from further production and sale of the accused product.
Virtual Designs – Featured Journal Article – Industrial design is migrating to the virtual world, and the design patent system is migrating with it. The U.S. Patent and Trademark Office (USPTO) has already granted several thousand design patents on virtual designs, patents that cover the designs of graphical user interfaces for smartphones, tablets, and other products, as well as the designs of icons or other artifacts of various virtual environments. Many more such design patent applications are pending; in fact, U.S. design patent applications for virtual designs represent one of the fastest growing forms of design subject matter at the USPTO.

November 5, 2014

Inventor Testimony Without Corroborating Evidence Is Insufficient to Prove of Reduction to Practice – K-40 Electronics, LLC v. Escort, Inc – Addressing the sufficiency of corroborating evidence to prove earlier reduction to practice, the Patent Trial and Appeal Board (PTAB) found that an inventor’s testimony regarding practicing features of an earlier invention was insufficient to establish reduction to practice in the absence of corroborating evidence. Accordingly, in finding the challenged claims to have been proven invalid, the PTAB considered prior art references post-dating the uncorroborated reduction to practice. K-40 Electronics, LLC v. Escort, Inc., Case Nos. IPR2013-00203, 2014 WL 4273883 (PTAB, Aug. 27, 2014) (Ward, APJ).
The Importance Of Intellectual Property Due Diligence In Transactions – Due diligence is a fundamental tool for decision makers to evaluate whether or not they should move on with a given transaction. A due diligence report provides valuable information for different levels of reports. An intellectual property due diligence report can be made for several types of transactions, such as a company merger and acquisition, assets sale, joint ventures and partnerships, licensing and cross-licensing, loans and secured transactions, valuations, among other possibilities. The difficulty in a due diligence process is to pre-define with your client the scope, what should be reported and at which level of detail. The definition of the type of analysis to be conducted and the level of detail of the report in a due diligence process are the key factors in a successful
Unincorporated Associations Can Own and Enforce Trademark Rights – The U.S. Court of Appeals for the Ninth Circuit affirmed a grant of summary judgment and a permanent injunction in favor of a common law trademark owner whose marks were misappropriated by a former member, on the grounds that unincorporated associations have capacity to own trademark rights and standing to enforce such rights under the Lanham Act. Southern California Darts Association v. Zaffina, Case No. 13-55780 (9th Cir., Aug. 11, 2014) (Wolf, J.).
Outsourcing and In-sourcing Intellectual Property – An article published in The Hindu on October 24, 2014, talks about the silent in-sourcing movement in Multi-National Companies. Organizations such as General Motors, focusing on in-sourcing IT operations during the last three years, and Astra Zeneca, setting up a captive unit in Chennai to move a large portion of global IT operations, have been cited in the news report as examples to highlight the growing in-sourcing phenomenon. One of the reasons cited in the article for such a trend is to safeguard high value Intellectual Property of the in-sourcing companies. Taking the statement at face value and assuming that there is IP at stake in out-sourcing the same, could there be anything with respect to IP, that might be encouraging this trend?
Counterclaims, the Well-Pleaded Complaint, and Federal Jurisdiction – Featured Journal Article – The Article begins by laying the statutory and constitutional foundation of “arising under” jurisdiction. The current connection between “arising under” jurisdiction and federal question jurisdiction is discussed. Part I also fully sets forth the well-pleaded complaint rule, and discusses removal jurisdiction, which is governed by the concept of “arising under” jurisdiction. As necessary background to understanding the Court’s reasoning in Holmes and why the case prompts a general discussion on federal jurisdiction implications, Part I concludes by defining a district court’s jurisdiction over patent cases, the Federal Circuit’s appellate jurisdiction over patent cases, and how these two areas of jurisdiction fit within the broader scheme of federal question jurisdiction.

November 4, 2014

Oracle, YP Interactive, and Yellowpages.com v. Click-to-Call Technologies LP, Final Written Decision IPR2013-00312 – In its Final Written Decision, the Board found that Petitioner had demonstrated by a preponderance of the evidence that claims 1, 2, 8, 12, 13, 15, 16, 19, 22, 23, 26, 29, and 30 of the ‘836 patent are unpatentable. In particular, the Board found that claims 1, 2, 12, 13, 19, 22, 23, 26, 29, and 30 are unpatentable under 35 U.S.C. § 102(e) as anticipated by Dezonno; that claims 1, 2, 8, 12, 13, 15, 16, 19, 22, 23, 26, 29, and 30 are unpatentable under 35 U.S.C. § 103(a) as having been obvious in view of Dezonno; and that claim 22 and 29 are unpatentable under 35 U.S.C. § 103(a) as having been obvious in view of Dezonno taken in combination with the Mosaic Handbook. Takeaway: Statements that are unsupported by evidence or a showing of facts essentially amount to mere pleadings, and therefore cannot be relied upon to antedate an applied reference.
China Opens Intellectual Property Courts to Improve Image – China will set up its first specialized court to handle intellectual property cases in Beijing within two weeks as it seeks to answer criticisms the country is lax in protecting such rights. Courts dedicated to handling such trials on patents, trademarks and computer software issues will also be set up before the end of the year in two other major Chinese cities, Shanghai and southern Guangzhou, Wang Chuang, the deputy presiding judge with the IP division of China’s Supreme Court, said at a briefing today. “This will be an important revolution of the country’s judicial system to deal with IP-related cases,” Wang said. It’s also “a step to promote the development of China’s emerging industries,” he said.
A Hypothetical-License Damages Theory Must Be Rooted in Non-Hypothetical Evidence – Oracle sued SAP for copyright infringement based on activities of TomorrowNow, a company acquired by SAP. SAP admitted liability but disputed damages. Following the damages trial, the jury awarded Oracle $1.3 billion in damages based on a hypothetical-license theory of recovery, but the award was short-lived as the district court later found the amount to be “grossly excessive” and unsupported by evidence. Takeaway: The U.S. Court of Appeals for the Ninth Circuit has explained that a copyright owner is not required to show that it actually would have granted a license to the defendant before it can recover hypothetical damages based on a fair market licensing theory, notwithstanding that the evidence showed it would not have granted such a license. However, the hypothetical-license award cannot be based on speculation. Oracle Corporation v. SAP AG, Case No. 12-16944 (9th Cir., Aug. 29, 2014) ( Fletcher, J.).
Unitary patent News summary (November 2014) – Article presents a summary of unitary patent and UPC news from around the web. In the post below the authors provide an update on the state of German ratification of the Unified Patent Court Agreement, a reference to the European Patent Litigation Certificate in IPReg’s UK patent attorney exam proposals, and a couple of recent articles on the Kluwer Patent Blog that discussed unitary patent renewal fee progress and the possibility of a pro-patent bias in the UPC.
Federal Circuit shoots down orthodontics manufacturer’s challenge in patent lawsuit – The U.S. Court of Appeals for the Federal Circuit has rejected a challenge by a leading manufacturer of orthodontic appliances and supplies in a lawsuit over its patent for a bracket for orthodontic braces. Ormco Corporation owns U.S. Patent No. 8,393,896, which claims a bracket that avoids or reduces interference with the gums even when being mounted on a molar tooth. Ormco, a Delaware corporation, accuses World Class Technology Corporation, based in Oregon, of infringing the ‘896 patent. World Class denies infringement. In its ruling, the U.S. District Court for the District of Oregon construed two claim terms — “support surface” and “ledge.”
Innovative Copyright – Featured Journal Article – Michael Carrier asks his readers to consider the effects of today’s IP laws on innovation. He offers three modest proposals for copyright law reform that will promote technological innovation.

November 3, 2014

Troutman Sanders Federal Circuit Review – October 24, 2014 – Review summarizing the Federal Circuit precedential patent opinions from last week: 1 – Patentee’s failure to argue infringement under adverse claim construction on appeal constitutes waiver of the infringement claim. 2 – A claim construction that naturally aligns with the problem and solution in the written description is most likely correct. 3 – The Government assumes infringement liability when it requires a private party to performed a quasi-governmental act that infringes on a patent.
Patent Infringement: “Soda-Pop” Bottle Caps Can Be Analogous Art for Flash Chromatography … – Addressing the issue of analogous art in the context of inter partes reexamination, the U.S. Court of Appeals for the Federal Circuit affirmed a decision of the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB or Board) that in turn affirmed an examiner’s rejection of all claims to a low pressure liquid chromatography (LPLC) cartridge because it would have been obvious to modify prior art cartridge with the pressure-resistant threaded cap of carbonated beverage containers known in the art to address a concern with leakage in LPLC cartridge. Scientific Plastic Products, Inc. v. Biotage AB, Case No. 13-1219, -1220, -1221 (Fed. Cir., Sept. 10, 2014) (Newman, J.) (Moore, J., dissenting).
Disney Wins Round in Spider-Man Suit – On the eve of Halloween, a federal judge in Reading, Pa., reasserted that Stan Lee Media Inc. doesn’t own Spider-Man. The company, referred to in court papers as SLMI, is a successor to the one that Stan Lee, creator of Spider-Man, had signed a contract with in 1998. About a decade later, after the Walt Disney Co. had bought Marvel Entertainment, the comic-book company that originally printed the Spider-Man stories starting in the 1960s, SLMI filed a suit claiming that it had copyright ownership of several of Lee’s characters. The opinion that U.S. District Judge Paul A. Crotty of the Southern District of New York issued in that case in 2010 has set the standard for most of the decisions in the similarly styled subsequent suits filed by SLMI. U.S. District Judge Jeffrey L. Schmehl of the Eastern District of Pennsylvania took the same course in the suit before him Thursday.
In re Apple: Federal Circuit Grants Writ of Mandamus Ordering Transfer of Case – The U.S. Court of Appeals for the Federal Circuit granted a petition for a writ of mandamus and ordered the case transferred from the U.S. District Court for the Eastern District of Texas to the U.S. District Court for the Northern District of California, finding that the district court abused its discretion in denying a motion to transfer. In re Apple, Case No. 14-143 (Fed. Cir., Sept. 11, 2014) (per curiam) (Bryson, J., dissenting).
Portrait of the Scholar as an IP Ace – Excerpt for download of IP Law & Business article discussing copyright issues related to James Joyce & biographical information relating to the manager of the Joyce literary estate. Copyright lawyer Robert Spoo manages the author’s literary estate and is notorious for keeping a “stranglehold” on Joyce’s rights.

October 29, 2014

Copyright Watchers: 11th Circuit Gave Publishers a Hollow Victory – At first blush, an Oct. 17 decision by the federal appeals court in Atlanta looked like a big win for publishers who sued to curtail Georgia State University’s practice of letting students download copyrighted reading assignments without getting permission or paying licensing fees. The 129-page opinion by Judge Gerald Tjoflat of the U.S. Court of Appeals for the Eleventh Circuit reversed a painstaking 350-page ruling by a federal judge in Atlanta that said GSU’s electronic reading rooms hadn’t infringed publishers’ copyrights except in a handful of cases. The panel—which also included Circuit Judge Stanley Marcus and, sitting by designation, Senior District Judge Roger Vinson of Florida—also vacated U.S. District Senior Judge Orinda Evans’ $2.9 million award of legal fees and expenses to GSU and the Georgia Board of Regents.
Oral Argument In Teva Pharmaceuticals: Supreme Court To Decide Federal Circuit’s Standard Of Review Of District Court Claim Construction Rulings – On October 15, the Supreme Court heard oral argument in Teva Pharmaceuticals USA, Inc. v. Sandoz, Inc. (No. 13-854). See here for a prior report on the Court’s grant of certiorari. The issue presented in the case is “Whether a district court’s factual finding in support of its construction of a patent claim term may be reviewed de novo, as the Federal Circuit requires (and as the panel explicitly did in this case), or only for clear error, as Federal rule of Civil Procedure 52(a) requires.” The case arises in the context of the Court’s landmark ruling in Markman v. Westview Instruments, Inc. (1996) 517 U.S. 370, in which the Court held that claim is a question of law for the court to decide, not a jury. Markman, however, did not directly address the issue of the standard of review of district court resolutions of factual disputes in undertaking claim construction.
Verdict against VeriFone Systems (NYSE:PAY) Overturned – A $15.4 million verdict against VeriFone Systems Inc. (NYSE:PAY), a card payments company, was overturned by a federal appeals court because the a lower court judge interpreted improperly the patents that it had allegedly infringed. The U.S. Court of Appeals for the Federal Circuit stated that the jury had concluded wrongly that VeriFone had infringed the patents of CardSoft Inc. 2013 because it relied on the interpretation of the judge of a patent term that was very broad.
IP lawyer: U.S. SC ruling has become a ‘viable tool’ in battle against patent trolls – More federal district court judges are awarding attorneys’ fees to prevailing parties in patent infringement cases. In April, in Octane Fitness LLC v. ICON Health & Fitness Inc., the U.S. Supreme Court ruled 9-0 to expand the availability of attorneys’ fees for prevailing parties and increase federal district courts’ discretion in awarding the fees. Specifically, the justices wrote in Octane that the U.S. Court of Appeals for the Federal Circuit’s framework in a previous decision, Brooks Furniture Manufacturing Inc. v. Dutailier International Inc., was “unduly rigid” and that it “impermissibly encumbers” the statutory grant of discretion to district courts.
Patent Claim Interpretation and Information Costs – Featured Journal Article – The concept of invention is crucial to patent law. Inventions of patentable quality are what the patent system is trying to encourage. In order to provide this incentive to produce such inventions, the patent system must provide protection for the invention. The problem the patent system runs into is that inventions are difficult to define-the difficulty stemming in part from the intangible nature of inventions. As a result, patent law encounters an information cost problem. Everyone in the patent system needs information about the invention, but the invention’s intangibleness makes this information costly to produce, collect, and comprehend. Patent law responds by enforcing certain information producing rules. This Article first addresses the information cost issues presented by the process of interpreting the patent claim. It then takes a specific look at the information costs generated when using two different information tools during claim interpretation. This Article concludes that full use of the specification early in the claim interpretation process minimizes information costs. It further concludes that any interpretation methodology should consider the information costs it imposes on both the patentee and any patent observer, keeping in mind the invention-specific information patent law already requires to be produced.

October 28, 2014

Supreme Court’s Denial of Certiorari Strengthens Intellectual Property Licensees’ Protections in Cross-Border Insolvency Cases – Chapter 15 of the Bankruptcy Code provides mechanisms for dealing with cases of cross-border insolvency. On Oct. 6, 2014, the U.S. Supreme Court, in Jaffé v. Samsung Electronics Co., Ltd., denied review of a decision of the U.S. Court of Appeals for the Fourth Circuit, upholding a bankruptcy court’s determination that a foreign debtor in a Chapter 15 case could not terminate its intellectual property licenses under German law, where such action would deprive the licensees of the debtor’s U.S. patents the protection they would have received in the United States under section 365(n) of the Bankruptcy Code. The Court’s denial of certiorari effectively leaves undisturbed the Fourth Circuit’s reasoning and decision, and as such, provides critical protection to intellectual property licensees of a Chapter 15 foreign debtor.
AIPLA Names Lisa Jorgenson as Executive Director – The American I ntellectual Property Law Association (AIPLA) is hosting their annual meeting in Washington, DC, and moments ago at the luncheon the organization announced that the AIPLA Board of Directors has named Lisa K. Jorgenson as the new Executive Director. Her appointment will take effective November 17, 2014. Jorgenson previously served as a member of the AIPLA Board of Directors from 2005 – 2008 and recently served as the Treasurer for the Intellectual Property Owners Association, and as a member of the Executive Committee of the Association of Corporate Patent Counsel. Jorgenson, who most recently served as the Group Vice President of Intellectual Property and Licensing at the Dallas, Texas, based STMicroelectronics, one of the world’s largest manufacturers of semiconductor products, will be relocating to the metropolitan DC area in order to take this position with AIPLA.
Challenge to Google Android Trademark At Supreme Court Raises Recusal Issues – The U.S. Court of Appeals for the Seventh Circuit affirmed a grant of summary judgment in Google’s favor on claims that its Android operating system for mobile phones infringed the Android Data mark. The court held that the Android Data mark was “permanently abandoned” by 2007 and so it had returned to the public domain before Google began using its own Android mark (Specht v. Google Inc., 747 F.3d 929, 110 U.S.P.Q.2d 1319 (7th Cir. 2014). Specht’s cert. petition challenges events that occurred in the district court litigation. It presents two questions: 1.?whether a judge must disqualify himself from a case where he owns stock, and his wife sits on the board of directors, in a company that has a vested interest in the outcome of the case even when the judge refuses to allow that company to become a named party in the lawsuit. 2.?whether a district court may properly grant summary judgment on issues bypassed by the parties, by relying on portions of the pleadings not identified by the moving party and resorting to information outside of the record, without first providing the losing (non-moving party) with notice and a reasonable opportunity to respond.
Sonos, Oxford University Press: Intellectual Property – In a case involving academic presses and a textbook publisher against the University of Georgia, a federal appeals court said that previous guidelines about copyright law’s fair-use standard are improper. Plaintiffs in the case are Oxford University Press Inc., Cambridge University Press and Sage Publications Inc. of Thousand Oaks, California. In its Oct. 17 ruling, the U.S. Court of Appeals in Atlanta found that a lower court “abdicated its duty” to “analyze each instance of alleged infringement individually” by drawing the fair-use baseline at 10 percent or one chapter of a work. (This represents one of 5 IP Updates in the linked Bloomberg page).
2013 National Lawyers Convention: Intellectual Property, Free Markets, and Competition Policy – Featured Journal Article – Excerpts from 2013 National Lawyers Convention including discussion of the relationship between competition and the patent system, voluntary licenses, and patent trolls. The panel included John F. Duffy, Samuel H. McCoy II Professor of Law; Armistead M. Dobie Professor of Law, University of Virginia School of Law; Richard A. Epstein, Laurence A. Tisch Professor of Law, New York University School of Law; James Parker Hall Distinguished Service, Professor of Law, University of Chicago Law School; Joshua D. Sarnoff, Professor of Law, DePaul University College of Law; Joshua D. Wright, Commissioner, Federal Trade Commissioner, and Professor of Law, George Mason University School of Law; and Moderator: Hon. Douglas H. Ginsburg, Senior Circuit Judge, U.S. Court of Appeals for the District of Columbia Circuit, and Professor of Law, George Mason University School of Law.

October 27, 2014

US Government Volunteers to Pay for Infringement by Japan Airlines – The US Federal Government does not get a free-pass on patent infringement. Rather, the Government’s unlicensed use of a privately held patent constitutes infringement and is actionable. However, Congress created a special court to hear the cases (the Court of Federal Claims), and implemented a number of restrictions on both the adjudication process and the substantive rights that all tend to favor the government as defendant. See 28 U.S.C. § 1498. Generally, patentees would prefer to litigate in Federal District court. Further, Congress created a special indemnity that bars lawsuits against government contractors and others doing the work of the Government. Under the statutory indemnity, when a patented invention “is used or manufactured . . . for the United States [Government] . . . the owner’s [only] remedy shall be by action against the United States in the [US] Court of Federal Claims.” 28 U.S.C. § 1498(a).
Surviving Inter Partes Review: Good Experts Are Key – Inter Partes review and covered business method review (collectively IPR) proceedings have now settled in as a new strategic tool for invalidating asserted patents. The early cases that have worked through to a final written decision have resulted in a significant patent kill-rate. Still, some claims are surviving. The final written decisions in which patent claims survive show that, for a patent owner to succeed, it is critical to win the battle of the experts. The same conclusion holds true for those final written decisions that invalidate patents. This article addresses several observations common to many of these decisions regarding the use of experts.
Cloud Computing Is Forcing a Reconsideration of Intellectual Property – “There is a huge amount of complexity in software-driven converged devices, with I.P. at the center of the development. You add in wireless and globalization, that just adds more complexity.” “Products are taking on a lot more functionality, like cars that have touch screens, streaming video, and Wi-Fi antennas,” said Russell E. Levine, a Chicago-based partner at the law firm Kirkland & Ellis who specializes in patent infringement and licensing. “Carmakers are used to thinking about the I.P. around brakes and exhaust systems. Now they need to think about who owns what technology in all kinds of products.”
IN BRIEF: Ellington’s Copyright – A copyright renewal that Duke Ellington signed in 1961 does not unfairly deprive his heirs of a portion of foreign royalties on works such as “Mood Indigo” and “Sophisticated Lady,” the New York Court of Appeals said on Oct. 23. The state’s highest court ruled, 5-2, that although changes in the music industry over the past 53 years have made the contract and others signed in that era more favorable to music publishers, “clear and unambiguous” provisions govern EMI Music Inc.’s obligations to Ellington’s grandson Paul Ellington and other survivors.
Champagne or Champagne? An Examination of U.S. Failure to Comply with the Geographical Provisions of the TRIPS Agreement – Featured Journal Article – Under TRIPS, member countries must develop laws to prevent the use of geographical indications on wines that do not originate from the area signified by the indication. The U.S. has tested the boundaries of Article 23 by enacting legislation that provides greater protection to U.S. wine makers who use European geographical indications on wine made in the United States.

October24, 2014

Do-Gooders Need Not Apply – According to its mission statement, Consumer Watchdog is a non-profit entity “dedicated to providing an effective voice for taxpayers and consumers in an era when special interests dominate public discourse, government and politics” – and they apparently also challenge patents in their spare time. In 2006 Consumer Watchdog filed a request for inter partes reexamination under the old pre-AIA rules, challenging certain patent rights to stem cells that had been granted by the USPTO to the Wisconsin Alumni Research Foundation. When this public interest group failed to get the WARF patent thrown out last year, they exercised their statutory right to appeal. Section 141(c) of the U.S. Patent Laws provides that a party to a USPTO administrative proceeding who is dissatisfied with the Patent Office’s final written decision may appeal to the U.S. Court of Appeals for the Federal Circuit. (35 U.S.C. § 141). However, Chief Judge Radar writing for a unanimous three-judge panel recently rejected the appeal out of hand because the public interest appellant simply lacked standing.
A win for innovation: Supreme Court’s denial of review of Jaffe v. Samsung Electronics Co. preserves U.S. rights of licensees of Chapter 15 foreign debtors – On Monday, October 6, 2014, the U.S. Supreme Court denied a petition for writ of certiorari in Jaffe v. Samsung Electronics Co., thereby preserving the U.S. rights of creditor-licensees of foreign debtors if those foreign debtors file under Chapter 15 of the Bankruptcy Code (the “Code”). The Court denied review of a decision by the U.S. Court of Appeals for the Fourth Circuit, which had considered whether, under Chapter 15, a bankruptcy court must enforce an order from a foreign insolvency proceeding.
Michelle Lee to be Nominated as Commerce Undersecretary for IP, USPTO Director – The Obama administration has named Michelle Lee, deputy undersecretary at the Commerce Department and deputy director of the U.S. Patent and Trademark Office, as potential nominee to the post of undersecretary for intellectual property and USPTO Director. Lee, who has held her current positions since January this year, is among other public figures and professionals the White House listed in an announcement posted on its website Thursday.
Silicon Valley’s Anti-Patent Propaganda: Success at What Cost? – One of the real problems with the debate over patent litigation abuse is that it hasn’t focused on litigation abuse at all. Instead, the debate has focused on attempts to characterize patent owners with pejorative labels, such as calling anyone who has the audacity to seek to enforce their rights a “patent troll.” Unfortunately, the term “patent troll” has evolved to mean “anyone who sues me alleging patent infringement.” This has lead the media, the public and Members of Congress to incorrectly believe that there is a “patent troll problem,” which has influenced decision-makers all the way from Capitol Hill to the United States Supreme Court, who increasingly seems to be deciding patent cases with one eye firmly on what is a completely non-existent problem.
Patent trolls take a toll on Korean IT companies – Two former mobile phone giants, Nokia and Ericsson, have become among the world’s biggest “patent trolls,” using their past licenses in telecommunication and mobile phone source technologies to make a profit. They profit by making contracts with phone manufacturers for their patents and suing phone giants like Samsung Electronics and Apple, saying they are infringing their technologies. Local analysts say this trend severely affects Korea. More than half of Korean companies that have lawsuits filed against them from overseas-based patent management firms are small or midsized.
Predictability and KSR’s Fundamental Change to Nonobviousness in Patent Law – Featured Journal Article – In KSR v. Teleflex, the Supreme Court addressed the doctrine of nonobviousness, the ultimate question of patentability, for the first time in thirty years. In mandating a flexible approach to deciding nonobviousness, the KSR opinion introduced two predictability standards for determining nonobviousness. The Court described predictability of use and predictability of end result. Although the first type of predictability is easily explained as part of the flexible approach endorsed by KSR, the second type represents a potentially radical shift in the nonobviousness doctrine.

October 22, 2014

Federal Circuit Quibbles With Local Patent Rules – The U.S. Court of Appeals for the Federal Circuit on Monday put some limits on district judges’ authority to enforce compliance with local patent rules. Reviving a San Diego case against Pfizer Inc. over cancer treatment, the appellate court ruled that U.S. District Judge Janis Sammartino overstepped when she refused to let patent holder AntiCancer Inc. amend its preliminary infringement contentions unless it agreed to pay Pfizer’s $186,000 attorney fee bill. The ruling could reverberate in the Northern District of California, as the Southern District’s local patent rules are patterned directly after the Northern District’s. The rules require parties to serve infringement contentions two weeks after the first case management conference, to help set boundaries on discovery and on theories of the case. Allowing parties to amend contentions can turn a complex patent case into a “nightmare,” one Northern District judge observed at a hearing two weeks ago.
Proving Non-Obviousness with Ex-Post Experimental Evidence? – The Federal Circuit has rejected BMS’s petition for en banc rehearing in its chemical compound obviousness case. However, four additional opinions either concurring or dissenting show that the court does not speak with one-mind on the issue. Obviousness is the central patentability doctrine and thus, even small modifications to the doctrine can have important systemic impacts. En Banc Denial Opinions. The patent in question – if valid – is worth hundreds of millions of dollars and so we can expect a petition for writ of certiorari to the Supreme Court.
After patent litigation, is trade mark litigation the next big topic? – So many major conferences, seminars, lectures and other eventshave recently been organised in the field of patent litigation that one might be tempted to think that it is the only species of IP that ever gets litigate. Understandably there is much interest in the European Union, where practitioners and their clients [or should that be patent owners and their professional representatives?] have to juggle with their own domestic patent litigation system, the often complex and arcane proceedings before the European Patent Office, and a whole set of new ifs, whens and maybes that characterise the Unified Patent Court and what is now the 16th draft of its Rules. Likewise there is an almost obsessive interest in patent litigation in the United States, where the subject lies somewhere between a cottage industry and an art form, with ever-shifting guidance concerning injunctions, damages, patent eligibility and the interrelationship of patent suits with the sale price of patents singly or in bundles. On 4 and 5 December no fewer than three international two-day events are addressing the subject.
Courts Weigh in on the Protection of Software Code – Two substantial decisions rendered in 2014 have provided additional context to the protection of computer software under existing intellectual property law. It is a common complaint that existing intellectual property principles apply poorly to new technologies like software. In fact, the degree of protection available for software code and the ideas underlying its nature or function remains somewhat unresolved. In June, however, the U.S. Supreme Court made an effort to distinguish sufficiently inventive software applications that are worthy of patent protection from general abstract ideas that must remain available for public use. Additionally, in May, the U.S. Court of Appeals for the Federal Circuit found that software code can remain protectable under copyright law despite a claim that the general idea underlying the code had merged with the expression, rendering the software unprotectable. Thus, while general programming ideas may not be protectable under patent law, particular expressions of them in specific code can be claimed under copyright law. The line at which protection begins, however, remains somewhat unclear.
A Case for Stronger Protection of Intellectual Property in Agricultural Biotechnology; Comparing the United States, India, and Argentina – Featured Journal Article – There are several areas of proposed reform to strengthen intellectual property rights in agricultural biotechnology across the globe. First, a stronger enforcement mechanism for patent protections should be amended into the TRIPS agreement. Next, expanding required protection to isolated genetic material should also be amended into Article 27 of the TRIPS agreement for patentable subject matter. As patent laws are strengthened, there should also be reforms in regulatory law that follow scientifically sound practices to determine safety of agricultural biotechnology practices. Lastly, patent laws should be harmonized with current United States patent laws, including the licensing of agricultural biotechnology products. At the very least, the developing countries should be brought into compliance with the TRIPS agreement, which should be enough to start further investment in these countries. These reforms will lead to greater investment in all countries that implement them as well as a greater potential to solve some of the biggest problems through agricultural biotechnology.

October 21, 2014

‘Alice’ Casts Ripples Through Courts, Shakes Up Investors – As one district judge after another—and a few U.S. Court of Appeals for the Federal Circuit panels—have applied Alice to invalidate patents, the magnitude is sinking in. Patent case filings are dropping, and Mark Lemley believes Alice is part of the reason. Investors who help finance some patent litigation may be growing more cautious. And while Alice was a software case, life sciences companies may be getting swept up in the tide. Earlier this month, a federal magistrate judge in Delaware invalidated a genetic testing patent applying Alice and other Supreme Court precedents, and on Monday, Myriad Genetics, the company that litigated the patentability of DNA before the Supreme Court last year, got a skeptical reception at the Federal Circuit as it tried to argue that at least the application of DNA discoveries via gene-related probes and primers is patentable.
Ferring B.V. v. Watson Labs., Inc.—Florida (I) – The issue of infringement in this case relates entirely to dissolution rates. Apotex sought to market its generic product by designing around Ferring’s Lysteda. In its 2010 ANDA, Apotex only included one dissolution specification: that at least 80 percent by weight of the active ingredient would dissolve in 60 minutes. Apotex then certified pursuant to paragraph IV that it did not infringe any of the patents-in-suit. Ferring then filed suit. The patents-in-suit claimed dissolution rates of < 70% in 45 minutes, > 50% in 90 minutes, or 100% in 120 minutes. Takeaway: When the ANDA is silent with respect to infringement, the correct analysis focuses on the product that is likely to be sold, or, more preferably, what will be sold. Here, Apotex provided bio-batch data that shows what it is likely to sell, and Ferring’s expert testified that none of the tablets was infringing. Therefore, the Federal Circuit found that Apotex’s 2010 ANDA would not infringe the patents-in-suit.
United States: Maintaining U.S. Trademark Registrations: Small Uses By Foreign Owners Sufficient – Foreign owners of U.S. trademark registrations have a problem. They obtain a U.S. registration, without using the mark in the U.S., based on a home country registration or an International Registration. However, the owner must use the mark in the U.S. later to keep the U.S. registration alive. To prevent the USPTO from automatically cancelling the registration, the foreign trademark owner must file a document (an affidavit or declaration) in the USPTO claiming current use in the U.S. during the 6th year after registration and with the renewal application at 10 year intervals after registration. A claim of excusable non-use can also work, but is difficult to prove. Often, the foreign owner uses the mark in its home country and wants to maintain the U.S. registration, if possible, to reserve the mark for a future U.S. launch or help prevent pirates from confusing people in the U.S. who know the mark. The purpose of this article is to suggest some tricks and tips to help the foreign owner to efficiently make the minimum necessary use, including by making full use of the Internet.
UK IP Chief Wants Schools to Teach Copyright Ethics and Morals – The UK’s top IP advisor has published recommendations on how today’s youth should learn to respect copyright. The document envisions a mandatory copyright curriculum for all ages, online awareness campaigns, and a copyright education program run by the BBC.
Case Law Update on Design Patents – Download Professor Sarah Burstein’s powerpoint presentation presented at the 30th Annual Institute on Intellectual Property held October 10, 2014. The presentation features several Federal Circuit decisions, including High Point Design v. Buyer’s Direct (Fed. Cir. Sept. 11, 2013), Apple v. Samsung (Apple III) (Fed. Cir. Nov. 18, 2013), Pacific Coast Marine v. Malibu Boats (Fed. Cir. Jan. 8, 2014), Z Produx v. Make-Up Art Cosmetics (Fed. Cir. Aug. 13, 2014) (aff’d per Rule 36), and JAT Wheels v. JNC Wheel Collection (C.D. Cal. June 24, 2014), among others.

October 20, 2014

Level 3 Communications, LLC v. AIP Acquisition LLC, Final Written Decision IPR2013-00296 – In its Decision, the Board held that each of challenged claims 1-15 of the ’879 patent was unpatentable. In particular, the Board found that Petitioner had shown by a preponderance of the evidence that claims 1-7 and 15 were unpatentable over Kammerl and Iwami; that claims 8, 9, and 11–13 were unpatentable over Kammerl, Iwami, and Kobayashi; that claim 10 was unpatentable over Kammerl, Iwami, Kobayashi, and Chau; and that claim 14 was unpatentable over Kammerl, Iwami, and Gordon. Takeaway: Parties are not permitted to raise new arguments or evidence at oral hearing.
Converse: Stomping Out Counterfeits through Int’l Trade Commission Proceedings – Last week, Converse filed a suit in district court and the ITC in an effort to combat what it considers counterfeit and knock-off versions of its Chuck Taylor All-Star line of sneakers. One of the primary differences of an ITC proceeding is that it utilizes in rem jurisdiction based upon the presence of imported goods. The ITC will consider claims of trademark, patent, and copyright infringement, as well as trade secret misappropriation and a limited number of other business torts. Once an investigation is instituted, it is conducted similar to a Trademark Trial and Appeal Board or district court proceeding. There is an Administrative Law Judge, discovery, motion practice, and a trial. A major difference, though, is that an ITC staff attorney can participate throughout the process in order to ensure that the public interest is protected (also, no jury). Decisions of the ITC can be appealed to the U.S. Court of Appeals for the Federal Circuit and are also subject to official “disapproval” by the President, but this rarely occurs.
Vringo (VRNG) Submits Petition to Court of Appeals in Case Against Google (GOOG) – Vringo (NASDAQ: VRNG) announces that its wholly-owned subsidiary I/P Engine, Inc. has submitted a petition for rehearing en banc in its case against Google (Nasdaq: GOOG) and certain of Google’s customers at the U.S. Court of Appeals for the Federal Circuit following the Federal Circuit’s split opinion on August 15, 2014. “Ken Lang invented and patented technology that a federal judge and jury found Google was infringing. The appellate court’s conclusion that these patents aren’t valid cannot be reconciled with the fact that eight different examiners at the U.S. Patent and Trademark Office, the jury that heard evidence in this case for over two weeks, the U.S. District Court judge who presided over the trial, and the dissenting judge at the Federal Circuit all concluded that the patents are valid and should be upheld,” says David Boies, chairman of Boies, Schiller & Flexner LLP. The panel’s split decision raises important issues about the role of juries in patent cases that are worthy of further review by an en banc panel of the Federal Circuit.
Argument analysis: If gut feelings could control… – The Supreme Court pondered laboriously Wednesday the difference between what is fact and what is law. Finding no sure way to answer, the Justices seemed tempted to go with a gut feeling that it needed to be made simple, to treat them as the same — at least for one branch of patent law. But there is a directive from Congress saying they are different. That was the dilemma that appeared to emerge as the Justices heard one of the biggest patent cases in years, Teva Pharmaceuticals USA v. Sandoz, Inc., over the differing — and maybe competing — roles of trial judges and a specialized federal appeals court that has a major role in shaping the law of inventions.
University IP and the Team Production Model: Why Change What’s Not Broken? – Featured Journal Article – A number of academics and other commentators have contended that it would be more efficient and fair to allow faculty to own the rights to their own inventions, even if they have been hired in part to invent and the inventions are created within the scope of employment. The debate, it should be noted, is only over the appropriate default rule. Not even critics of the current institutional default rule would object to faculty assignment of ownership rights to the university. Since faculty are not generally in a good position to pursue commercialization on their own, the question for public policy is what are the benefits and costs of allowing faculty, in the first instance, to decide whether the university or some other entity should manage the commercialization process.

October 16, 2014

The Nobel Prize and Employee Inventor Compensation – Professor Cotter writes about physics Nobel prize winner Shuji Nakamura who was part of the Japanese team that first developed an efficient blue LED which turned out to be a major stepping stone for the now popular general use of LED lighting for a variety of applications. Japanese law requires that inventors of high-value inventions be reasonably compensated and Professor Nakamura was able to receive about $8 million from his former employer Nichia Corp. (but only after suing). Apparently, Japan is in the process of removing this law so that corporate owners can retain a higher profit. Excerpt Source: PatentlyO: http://patentlyo.com/patent/2014/10/nobel-prize-patent.html
The Switchboard: Software patent approval rates sink in months following Supreme Court case – Vox’s Timothy B. Lee looks at the fallout of June Supreme Court Alice v. CLS Bank — which he reports has led to lower court decisions invalidating software patents and may be linked to a September decline in patent lawsuits. “The decision appears to be having another effect that could be even more important in the long run,” Lee writes. “It’s causing the patent office to reject a lot more patents on ‘business methods,’ a category of software patent that is notorious for its high litigation rate.”
Goodbye Patent Arbitration? – Patent dispute resolution has been trending into arbitration, while arbitration has been looking like litigation. But now patent reviews through the U.S. Patent and Trademark Office (PTO) offer the fast, cheap proceedings that arbitration is supposed to provide—and they just may kill the old way of arbitrating those disputes.
GeoTag Takes Two Steps Back in Patent Battles, One Step Forward in Fee Fight – In a patent battle, Domino’s Pizza Inc. on Oct. 7 won a summary judgment motion for noninfringement against store-locator technology company GeoTag, Inc., which has filed claims against more than 400 corporate defendants. In a related case, GeoTag also failed in its attempt to get a preliminary injunction against its former lawyers at the San Jose, Calif.-based Mount, Spelman & Fingerman. GeoTag wanted to bar Mount Spelman from sending letters to corporate defendants with which the store-locator technology company had settled. The letter sent by Mount Spelman to those former defendants states that the law firm holds a lien on all settlement proceeds.
Prometheus Rebound: Diagnostics, Nature, and Mathematical Algorithms – Featured Journal Article – The Supreme Court’s decision last Term in Mayo v. Prometheus left considerable uncertainty as to the boundaries of patentable subject matter for molecular diagnostic inventions. First, the Court took an expansive approach to what counts as an unpatentable natural law by applying that term to the relationship set forth in the challenged patent between a patient’s levels of a drug metabolite and the indication of a need to adjust the patient’s drug dosage. And second, in evaluating whether the patent claims add enough to this unpatentable natural law to be patent eligible, the Court did not consult precedents concerning the patentability of claims involving natural laws and natural products. Instead, it turned to two seemingly inconsistent decisions that reached opposing conclusions concerning the patent eligibility of industrial methods that used mathematical algorithms. The Court’s analysis invites challenges to many issued patents, while offering little guidance for resolving them. This Term, in the Association for Molecular Pathology case, the Court has another opportunity to clarify the meaning of its exclusion of natural phenomena from patent eligibility.

October 15, 2014.

Getting the best out of the EPO during the international phase of a PCT application for US applicants – Many US applicants using the Patent Cooperation Treaty (PCT) system designate the European Patent Office (EPO) as the International Searching Authority (ISA) to conduct the international search in Chapter I of the PCT procedure. This decision carries with it certain consequences during the international phase, and during the national and regional phases thereafter. Nevertheless, used properly, selecting the EPO as ISA, and optionally International Preliminary Examination Authority (IPEA) can give US applicants significant benefits.
Allison, Lemley & Schwartz on Patent Litigation – In 1998, John Allison and Mark Lemley published a groundbreaking empirical study of patent litigation, Empirical Evidence on the Validity of Litigated Patents. Allison and Lemley’s focus in that article was on written, final validity decisions by either district courts or the Federal Circuit from 1989 through 1996. The basic study design philosophy was to look at patent case outcomes; that is, what was the final outcome for patents that were litigated. That study is still widely cited. Working with Dave Schwartz, Allison and Lemley recently completed an updated (and much expanded) version of their 1998 study. The results of that study are being published in several articles, but the one that links most closely with the earlier study is Understanding the Realities of Modern Patent Litigation.
Patent Battle over Teva’s Copaxone Heads to High Court – It may not be looking like a blockbuster term for patent cases at the U.S. Supreme Court, but the IP bar will be watching closely Wednesday when the justices hear Teva Pharmaceuticals v. Sandoz. The case could set a precedent requiring the U.S. Court of Appeals for the Federal Circuit to defer to district court claim construction rulings—a move that would shift power from the Federal Circuit and could make it more difficult for lawyers to get patent decisions reversed on appeal.
Patent Office, China Establish Electronic Exchange for Application Priority Docs – A new service allows the U.S. Patent and Trademark Office to electronically exchange certain patent application documents with its equivalent office in China, the agency announced last week. At issue are so-called patent application priority documents. Under the Paris Convention for the Protection of Industrial Property, patent applicants who file in one country have a year to file in other member countries in order to hold on to their priority date.
O’Melveny Scores Patent Win for Mentor Graphics – Lawyers at O’Melveny & Myers won a $36 million jury verdict on Friday on behalf of software developer Mentor Graphics Corp. in a long-running patent dispute with rival Synopsys Inc. Both companies provide software for the makers of semiconductors and other sophisticated electronics. After nine days of trial before U.S. District Judge Michael Mosman of Oregon, a federal jury in Portland found that Synopsys infringed Mentor Graphics’ patent related to a method for prototyping integrated circuits. The jury awarded $36,417,661 to Mentor Graphics, which is based in Wilsonville, Ore., along with a 5 percent royalty of $4.8 million of Synopsys’ infringing sales

October 14, 2014

Defining Definiteness: Nautilus and Further Exercise – For more than a decade, the Federal Circuit has construed 35 U.S.C. § 112, ¶ 2 to require that claims be “amenable to construction” and not “insolubly ambiguous.” See Exxon Research & Eng’g Co v. U.S., 265 F.3d 1371, 1375 (Fed. Cir. 2001). In June, however, the Supreme Court declared that these standards are apt to “breed lower court confusion,” and thus a refinement of this standard was warranted. According to the Court, “a patent is invalid for indefiniteness if its claims, read in light of the specification delineating the patent, and the prosecution history, fail to inform, with reasonable certainty, those skilled in the art about the scope of the invention.” Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120, 2124 (2014). Since the Nautilus decision, the Federal Circuit has had further opportunities to address the definiteness requirement of pre-AIA 35 U.S.C. § 112, ¶ 2 (now 35 U.S.C. § 112(b)). Each decision has important implications for patent practitioners.
Why Is the U.S. Supreme Court So Interested in Patents? Part II – Part I of this article (See Oct 12 IPLAWDaily) explored the activism by the U.S. Supreme Court during the October 2013 term in the area of intellectual property. Part II explores in greater depth the aspect of deference granted by the Federal Circuit to district court fact-finding. While the holdings of the six cases decided in the October 2013 term do not directly address the point of judicial deference, a significant aspect of the deference granted by the U.S. Court of Appeals for the Federal Circuit to district courts’ findings with respect to claim interpretation will be addressed by the U.S. Supreme Court in the upcoming term. More particularly, the oral argument is scheduled for Oct. 15 in Teva Pharmaceuticals USA v. Sandoz, No. 13-854.
United States: ScriptPro’s Claims Not A Prescription For Invalidity – The recent Federal Circuit case ScriptPro, LLC v. Innovation Associates, Inc., No. 2013-1561 (Fed. Cir. Aug. 6, 2014), reversed the trial court’s summary judgment invalidity determination under 35 U.S.C. § 112, ¶1 (now § 112(a)). For a claim to be valid, the patent’s specification must describe the subject matter defined in the claims. See Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). Typically, § 112, ¶1 is used to invalidate claims where an added claim element does not have adequate support in the written description to show possession as of the filing date. In somewhat the other direction, the district court in ScriptPro rested its invalidity holding on a single conclusion: “that the specification describes a machine containing ‘sensors,’ whereas the claims at issue claim a machine that need not have ‘sensors.’” ScriptPro, slip op. at 2 (citing ScriptPro LLC v. Innovation Assocs., Inc., No. 06-2468, 2012 WL 2402778 (D. Kan. June 26, 2012)). The Federal Circuit determined that claims lacking a fully described element from the specification do not, as a matter law, require a holding of invalidity.
Argument preview: Trimming a specialized court’s power? – The Supreme Court has a keen fascination these days with patent cases, and it is often quite skeptical of the work of the specialized court that reviews that kind of case, the U.S. Court of Appeals for the Federal Circuit. Few cases reaching the Justices from that court have more on the line for the Federal Circuit and for patent combatants than the one set for argument this week. The Teva Pharmaceuticals case combines a core question about how the Federal Circuit reviews trial court decisions on the scope of patent claims and the right to control the sale of one of the most profitable pharmaceuticals on the market today.
‘Fair use’ and the new Copyright Law in Indonesia – With Indonesia’s new Copyright Law set to come into force later this month, it is an opportune time to consider how the new provisions will affect ‘fair use’ in Indonesia. ‘Fair use’ refers to exceptions to copyright protection, designed to facilitate the use of copyrighted material that may be considered acceptable but otherwise technically infringing copyright laws. For example, purchasing a downloaded song on an iPad and copying it to an iPhone where both devices belong to the same owner.

October 13, 2014

Federal Circuit Jurisdiction Over Patent Contract Disputes – In a precedential order issued in Jang v. Boston Scientific Corp., the Federal Circuit held that it has jurisdiction over the parties’ patent-related contract dispute under Gunn v. Minton even though the patents at issue have been invalidated. Despite having found Federal Circuit jurisdiction, the court denied the parties’ petition for permission to bring an interlocutory appeal because too many potentially relevant facts were unresolved.
Federal Circuit Decision Highlights Risk of Co-owning Patents – Co-owning any piece of property can lead to unwanted and unexpected headaches. And as demonstrated by the Federal Circuit in STC.UNM v. Intel Corp., Fed. Cir. No. 2013-1241, this is especially true with respect to co-ownership of patents. Here, the Federal Circuit held that STC lacked standing to bring its patent infringement lawsuit against Intel because Sandia Corp., a co-owner of the patent-in-suit, refused to voluntarily join the lawsuit, and could not be involuntarily joined under Federal Rule of Civil Procedure 19(a).
Think Twice When Writing About The “Invention” In A Patent Application – Two recent Federal Circuit decisions emphasize that characterizing the “present invention” by using that term in a U.S. patent application specification can limit the claims according to that characterization. See AstraZeneca AB v. Hanmi USA Inc. (non-precedential) and Hill-Rom Services, Inc. et al. v. Stryker Corp. et al. However, another recent Federal Circuit case demonstrates that U.S. patent applicants can nevertheless write specifications about the “invention” that are less likely to unduly limit claims. See ScriptPro, LLC v. Innovation Associates, Inc.
Moore Rod & Pipe, LLC v. Wagon Trail Ventures, Inc., Final Written Decision IPR2013-00418 – In its Final Written Decision, the Board found that claims 1-20 of the ’362 patent are unpatentable. The subject matter of the ’362 patent relates to oil field production equipment and, in particular, to the use of polymer liners in production tubing strings used in wells producing oil by rod pumping. Takeaway: When arguing that objective evidence of non-obviousness exists, a Patent Owner must support its arguments with sufficient relevant evidence that demonstrates a nexus between the evidence of secondary considerations and the merits of the claimed invention.
Why Is the U.S. Supreme Court So Interested in Patents? Part I – The historically unprecedented activity by the U.S. Supreme Court in the patent area so shortly after significant changes to the patent law in the form of the America Invents Act (AIA) have gone into effect has left many patent practitioners, patent applicants and patentees questioning what it all means. So, why is the Supreme Court so interested in patent cases, particularly those coming from the district courts? On the first day of the October term, the U.S. Supreme Court denied certiorari in nine intellectual property cases, with two cases remaining pending. However, during the October 2013 term, the Supreme Court heard six patent cases at oral argument and granted certiorari to hear one more case. It has been speculated in the press that the Supreme Court has taken this level of U.S. Court of Appeals for the Federal Circuit cases as a way to signal to Congress that the Federal Circuit is no longer required. It has further been postulated that the U.S. system would work better if the system was returned to having each individual circuit court hear patent appeals from the district courts.

October 10, 2014

A Major Drop in Patent Infringement Litigation? – New patent litigation (original complaint filing) is down 40% from this time last year. The chart below comes from LexMachina whose founder, Mark Lemley, offers the speculation that the drop is largely due to the Supreme Court’s recent patent law activity — especially the fall-out from Alice Corp. Along with Alice, we have a set of additional legal issues that favor accused infringers, including indefiniteness (Nautilus) and fee shifting (Octane Fitness). Further, we are also well into the reign of post-issuance reviews (IPR, CBM, and now PGR) and the vast majority of repeatedly-asserted patents are involved in a parallel administrative review. All these factors come together to provide plenty of reason for patent holders to slow-down on complaint filings. Of course, the change and the purported cause cannot be said to be ‘significant’ in the statistical sense.
Patent and Trademark Office (PTO) Decision Not to Institute IPR Is Final and Not Appealable – Effectively reiterating a decision from earlier this year, the U.S. Court of Appeals for the Federal Circuit granted a patent owner’s motion to dismiss an appeal of the decision by the U.S. Patent and Trademark Office’s Patent Trial and Appeals Board (PTAB, the Board) not to institute eight separate inter partes review (IPR) proceedings, explaining, once again, that the Court has no authority to review non-institution decisions for IPR proceedings. ZOLL Lifecor Corp. v. Philips Electronics North America Corp., Case Nos. 14-1588; -1589; -1590; -1591; -1592; -1593; -1594; -1595 (Fed. Cir., Aug. 25, 2014) (O’Malley, J.).
A test-drive for the Unified Patent Court – The author has had his share of reservations about the Unified Patent Court (UPC) system, which is why he applauded the initiative taken by his friends at Bristows in conducting a real-time test drive of the new system. The first report on their experience, masterminded by Alan Johnson and Alexandria Palamountain, can be read here. Now the same individuals take the story further, detailing proceedings in the London branch of the JUPC’s central division.
US Govt Holds Patent on Ebola, But Researcher Rejects Conspiracy Theories – Word is spreading on Internet sites that the U.S. government will profit from the Ebola crisis because a patent it holds on the virus would allow it to make money on treatments. However, a top Ebola researcher tells Newsmax Health that these conspiracy theories are off base. It’s true that the U.S. Centers for Disease Control and Prevention does hold a patent on one strain of Ebola. However, it is not the type that is causing the current outbreak, said David Sanders, professor of biological sciences at Purdue University.
False Origin Claims Applicable to Services as Well as Goods Regarding Trademarks, M. Arthur Gensler, Jr. & Assoc. v. Strabala – Clarifying prior Lanham Act case law related to false designation of origin, the U.S. Court of Appeals for the Seventh Circuit vacated a district court’s dismissal under Fed. R. Civ. P. 12(b)(6), holding that § 43(a) of the Lanham Act can reach claims alleging false designation as to the origin of services as well as goods. M. Arthur Gensler, Jr. & Assoc. v. Strabala, Case No. 12-2256 (7th Cir., Aug. 21, 2014) (Easterbrook, J.).

October 9, 2014

Moving Toward A Way of Searching Through Cited References – The average number of references cited per patent has continued to grow over the past decade and now almost reaches 50 per patent with no sign of slowing-down. When the reference-count was much lower, many examiners apparently assumed that the applicant had already ensured that the cited references did not disclose the patented invention. However, today neither patent applicants nor their patent attorneys have time to read through and fully consider such a large number of references. Obviously, examiners also do not have time to read 50 references. In the author’s view, technology could offer a nice solution that would easily allow examiners to conduct an internal textual search that is limited particularly to references that have been submitted in this case and perhaps those previously cited in similar cases. So far, that search capability does not appear to be available for the examiners – especially for non-patent prior art.
Federal Circuit Hears Arguments In Other Myriad Gene Patents Case – On October 6, 2014, the Federal Circuit heard oral arguments in a case involving the claims of the Myriad gene patents that were not invalidated by the Supreme Court’s 2013 decision. The Federal Circuit is reviewing the district court’s denial of Myriad’s motion for a preliminary injunction against Ambry Genetics Corp., based on the finding that Ambry had “raised a substantial question” as to whether Myriad’s “Primer Claims” and “Method Claims” are directed to “patent [in]eligible products of nature and abstract ideas.” (You can read more about the district court decision here.) The easiest decision for the Federal Circuit to reach would be to affirm based on the “substantial question” standard without deciding patent eligibility on the merits. As Myriad’s counsel suggested, such a decision would leave the biotech industry “at sea” until the case makes it way back to the Federal Circuit again.
PTAB on Analogous Art, Schott Gemtron Corp. v. SSW Holding Co., Inc. – In a final written decision addressing the patentability of claims challenged as obvious, the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB, the Board) found three challenged claims patentable, determining that one of the key prior art references was non-analogous and could not be used in an obviousness analysis. Schott Gemtron Corp. v. SSW Holding Co., Inc., Case IPR2013-00358 (PTAB, Aug. 20, 2014) (Braden, APJ). The Board reasoned that containing the accidental spill of liquid on a shelf is markedly different from containing miniscule amounts of liquid on a microscope slide. The Board determined that it did not matter whether the technique was scalable because a key reference was not analogous. As a result, the Board excluded the reference from its analyses. Without this reference, both obviousness challenges failed.
Supreme Court Raises the Bar for Establishing Induced Infringement in Limelight Networks, Inc. v. Akamai Technologies. – The impact of Akamai has already been seen in the district courts. In Emblaze Ltd. v. Apple Inc., No. 5:11-cv-01078-PSG, 2014 WL 2772731 (N.D. Cal. June 18, 2014), defendants moved for summary judgment for noninfringement of certain claims based on Akamai, arguing that the plaintiff could not prove infringement because those claims required actions by multiple actors. As there was no proof of any contractual or other control by defendant over the other actors, the court granted summary judgment. Other courts have been more reluctant to grant summary judgment where there is at least some evidence of a relationship between the defendant and other actors that performed some steps of the claims. Digital Reg of Texas, LLC v. Adobe Systems, Inc., No. C-12-1971-CW, 2014 WL 2604324 (N.D. Cal.June 10, 2014).
Judge Posner Orders Sherlock Holmes Estate to Pay Attorneys’ Fees for “Form of Extortion”, Klinger v. Conan Doyle Estate, Ltd. – In another scathing opinion against the Sherlock Holmes estate, Judge Richard A. Posner ordered the estate to pay attorneys’ fees for bringing “nonexistent copyright claims” as a “form of extortion” against its competitor. Judge Posner applauded the competitor, author Leslie Klinger, for “performing a public service” by “exposing the estate’s unlawful business strategy.” Klinger v. Conan Doyle Estate, Ltd., Appeal No. 14-1128 (7th Cir., Aug. 4, 2014) (Posner, J.). In granting Klinger an award of attorneys’ fees, the Seventh Circuit suggested that the Doyle estate engaged in anti-competitive behavior. “The Doyle estate’s business strategy is plain: charge a modest license fee for which there is no legal basis, in the hope that the ‘rational’ writer or publisher asked for the fee will pay it rather than incur a greater cost, in legal expenses, in challenging the legality of the demand.” “[T]he estate was playing with fire in asking Amazon and other booksellers to cooperate with it in enforcing its nonexistent copyright claims against Klinger. For it was enlisting those sellers in a boycott of a competitor of the estate, and boycotts of competitors violate the antitrust laws.”

October 8, 2014

Court Affirms Inequitable Conduct for Inventor’s Failure to Submit Prior Art – In a split opinion, the Federal Circuit has affirmed the district court’s determination that Calcar’s three asserted patents are unenforceable due to inequitable conduct during prosecution. The case teaches about “but-for materiality” and holds that the withholding of information can be the but-for cause of a patent issuance even if that information is insufficient to render any of the patent claims invalid in court. See also Therasense. The court winds this tale by noting the evidentiary difference: PTO only requires a preponderance of evidence of nonpatentability while invalidation in court requires clear and convincing evidence.
License Definition Trumps Need For Actual Infringement Finding – In a case addressing whether royalties are due under a patent licensing agreement even if the products are not covered by the patents, the U.S. Court of Appeals for the Tenth Circuit affirmed in part and reversed in part a lower court’s decision to award royalties, finding that royalties may be due so long as the products are covered by text in the agreement acknowledging such products do infringe. Cellport Systems, Inc. v. Peiker Acustic GMBH & Co. KG, Case Nos. 13-1029, -1046 (10th Cir., Aug. 5, 2014) (Lucero, J.).
New Automated Online Service Aims To Tackle Copyright Infringement – In the fight against online image theft there is a new player. Pixsy is a new automated copyright infringement software suite developed for photographers. Pixsy claims that they will be on the monitor for stolen images across the web and, once they find these images, alert the owner, and arrange a fair licensing fee based upon the usage. With the owner’s permission, Pixsy will contact the user to settle the dispute and will continue to act as a liason between the parties.
Recent Federal Circuit Decisions Declining to Review PTAB’s Institution (or non-institution) of inter partes review – Earlier this year, the Court of Appeals for the Federal Circuit issued a series of three decisions in cases involving appeals from a Patent Trial and Appeal Board’s (“PTAB’s”) institution, or non-institution, of Inter Partes Review (“IPR”). In relying on the wording of 35 U.S.C. § 314(d), which establishes the procedures for the institution of an IPR, the Federal Circuit dismissed all three appeals, emphasizing that the IPR statutes only authorize appeals to the Federal Circuit for final written decisions of the PTAB.
The Squeaky Wheel Gets The Grease–You Won’t Get Fees If You Don’t Complain Early – Applying recent standards for determining whether a case is “exceptional” under Octane Fitness for purposes of awarding fees, the U.S. District Court for the Eastern District of Texas (Judge Bryson of the U.S. Court of Appeals for the Federal Circuit, sitting by designation) denied a defendant’s motion for fees based, in significant part, on the defendant’s lack of prior complaint regarding the alleged misconduct that formed the basis of the post-verdict motion. Stragent, LLC v. Intel Corp., Case No. 6:11-cv-421 (E.D. Tex., Aug. 6, 2014) (Bryson, J., sitting by designation).

October 7, 2014

Handi Quilter, Inc. and Tacony Corporation v. Bernina International AG: Final Written Decision IPR2014-00364 – In its Final Written Decision, the Board held that each of challenged claims 1, 2, 5-7, 10, 12, 13, 17-21, 23–29, 31, 33, and 34 of the ’446 patent was shown to be unpatentable by a preponderance of the evidence. The Board dismissed Petitioner’s Motion to Exclude as moot because resolution of the Motion was not necessary for the Board to reach its Final Written Decision and because Patent Owner’s prior invention arguments were found to be unpersuasive even if the challenged evidence were to be considered. Takeaway: Successfully overcoming a proposed obviousness argument requires Patent Owner to present arguments that are responsive to the manner in which Petitioner has proposed combining the applied references under 35 U.S.C. § 103.
The patent discord (with Re: India) – Early this year, the Global Intellectual Property Centre, an affiliate of the US Chamber of Commerce, ranked India at the bottom of the International IP Index for having the weakest IP environment among 25 countries. In May, the US Trade Representative’s report, the Special 301, opted India for “Out-of-Cycle” review amidst pressure to designate India as a “Priority Foreign Country”, a tag preserved for the most notorious IP regimes. There is also a pending US International Trade Commission investigation to determine whether India has applied its patent laws in a discriminatory manner to the detriment of US pharmaceutical companies. Given this backdrop, when the Indian delegation sits to talk with its counterparts in the US later this month, the focus will be to find a common ground on three major disagreements in patent law: pre-grant opposition, patents for known substances, and compulsory licensing.
US Patents: Where are the Inventors Located? – PatentlyO chart lays out the yearly number of patents issued from 2006 to 2014, and breaks down the percentage filed by country. Numbers are based upon the inventor country as listed for the first-named inventor on the face of each U.S. utility patent. Although there are an increasing number of cross-country patents (with inventors listing different countries), those numbers are negligible in a population analysis such as this. The results for assignee-country are virtually parallel with the exception that about 6% of U.S. patents are issued without a listed assignee.
Apple Inc. v. Smartflash LLC, Denying Institution of Covered Business Method Patent Review CBM2014-00104 – In its Decision, the Board denied institution of covered business method review because Petitioner did not demonstrate that it is more likely than not that any of the challenged claims (1, 3, 11, and 13-15) of the ’720 Patent are unpatentable. The ’720 Patent relates to “a portable data carrier for storing and paying for data and to computer systems for providing access to data to be stored” and the “corresponding methods and computer programs.” Takeaway: In order to satisfy the financial product or service requirement of a covered business method patent, the patent must be related to a financial activity, but does not have to be used specifically in the financial or banking field.
IBM Patent Applications: Business, Medical Data Analysis – Survey of recently published patent applications which have been filed by IBM with the U.S. Patent and Trademark Office. Author finds a wide assortment of data analysis technologies for business, medical and consumer fields which may likely their way into the corporation’s intellectual property portfolio in the months to come. Survey begins with a look at a few inventions for software development projects, specifically for the management of artifacts connected to software development files by applications within development platforms. A trio of patent applications relating to helping businesses make sense of immense data sets is also discussed, including visualization methods and techniques for answering natural language questions. IBM’s patent applications involve more medical technologies, including a system for determining fraud within health care claims.

October 6, 2014

A Seismic Ruling On Pre-1972 Sound Recordings and State Copyright Law–Flo & Eddie v. Sirius XM Radio (Guest Blog Post) – A federal court in California has held that a California statute, Civil Code §980(a)(2), protects sound recordings fixed before February 15, 1972 against unauthorized public performance. The ruling is a victory for Flo & Eddie, Inc., a corporation that owns the rights to sound recordings made in the 1960s by the musical group The Turtles, including the hit song “Happy Together”; and a defeat for Sirius XM Radio, which tried to convince the court that California law only prohibited unauthorized reproduction and sale, and did not extend to public performances. More generally, it is huge victory for sound recording copyright owners and a big defeat for broadcasters, one that threatens to undo a 75-year-old consensus that state law does not provide a public performance right for sound recordings.
Handi Quilter, Inc. and Tacony Corporation v. Bernina International AG: Final Written Decision IPR2014-00364 – In its Final Written Decision, the Board held that each of challenged claims 1, 2, 5-7, 10, 12, 13, 17-21, 23–29, 31, 33, and 34 of the ’446 patent was shown to be unpatentable by a preponderance of the evidence. The Board dismissed Petitioner’s Motion to Exclude as moot because resolution of the Motion was not necessary for the Board to reach its Final Written Decision and because Patent Owner’s prior invention arguments were found to be unpersuasive even if the challenged evidence were to be considered. Takeaway: Successfully overcoming a proposed obviousness argument requires Patent Owner to present arguments that are responsive to the manner in which Petitioner has proposed combining the applied references under 35 U.S.C. § 103.
Appeals Court to Hear BRCA Gene Test Arguments – The U.S. Court of Appeals for the Federal Circuit (CAFC) is expected Monday to hear oral arguments by Myriad Genetics and a rival seeking to market its own breast cancer gene test, more than a year after a mixed ruling by the U.S. Supreme Court invalidated seven of Myriad’s 24 patents related to its BRCA diagnostic. Myriad is appealing a U.S. district court decision in March denying the company’s preliminary injunction seeking to stop Ambry Genetics from selling its own BRCA diagnostic temporarily, pending a trial on Myriad’s contention that Ambry infringed 10 BRCA-test patents it co-owns and were not part of the Supreme Court case (In re BRCA1- and BRCA2-Based Hereditary Cancer Test Patent Litigation, Case Nos. 14-1361, -1366).
Federal Circuit Schedules Argument for First IPR Final Written Decision – In re Cuozzo Speed Technologies LLC – The U.S. Patent Office has requested comments on the trial proceedings under the America Invents Act. Out of the 17 issues outlined, the Office highlighted two for which it would especially appreciate public feedback: (1) the use of the broadest reasonable interpretation (“BRI”) standard for claim construction, and (2) the perceived difficulty related to amending the claims. Next month, on November 3, 2014, the Federal Circuit will hear case 14-1301 — the first oral argument for the first appeal of an inter partes review (“IPR”) final written decision for the first IPR ever filed (IPR2012-00001). The IPR case caption was Garmin USA, Inc. (Petitioner) v. Cuozzo Speed Technologies LLC (Patent Owner), but the appeal is fashioned as “In re Cuozzo Speed Technologies LLC” because Garmin withdrew from the appeal. According to the Stipulation of Withdrawal (D.I. 17), Garmin “agreed not to participate in any appeal of the final written decision” pursuant to a settlement agreement. The Office intervened to oppose Cuozzo’s appeal.
Sham-Wow! Antitrust Liability May Attach to Sham Administrative Petitions: Tyco Healthcare Group LP v. Mutual Pharm. Co., Inc. – Addressing whether the “sham” exception to Noerr-Pennington immunity is limited to sham litigation in courts, the U.S. Court of Appeals for the Federal Circuit vacated a lower court’s summary judgment of no antitrust liability, finding that antitrust liability can attach to sham administrative petitions and that the sham litigation exception is not limited to court litigation. Tyco Healthcare Group LP v. Mutual Pharm. Co., Inc., Case No. 13-1386 (Fed. Cir., Aug. 6, 2014) (Bryson, J.) (Newman, J., dissenting).

September 30, 2014

Myriad set for another round – On Monday October 6th, the U.S. Court of Appeals for the Federal Circuit will entertain oral argument in another case involving Myriad’s BRCA1/BRCA2 diagnostic tests. In re BRCA1- and BRCA2- Based Hereditary Cancer Test Patent Litigation, Case Nos. 14-1361, -1366. In the words of Myriad “[t]his appeal … presents this Court with one of the most basic issues under patent law: should Myriad be able to enforce its patents to enjoy its remaining exclusivity or does section 101 of the Patent Act effectively say that Myriad can patent almost nothing related to its ground-breaking discovery?” Myriad Opening Brief (“Opening”) at page 4. In addition to responding to Myriad’s query regarding its patent estate, the Federal Circuit’s review has the potential to provide much needed clarity for diagnostic innovators and patent holders, as well as the U.S. Patent and Trademark Office, regarding the scope and reach of the U.S. Supreme Court’s recent patent-eligibility decisions.
Federal Circuit applies “searching review” of stay pending CBM proceeding – In Benefit Funding Systems, LLC v. Advance America Cash Advance Centers, Inc., the Federal Circuit upheld the district court’s decision to stay patent infringement litigation while the USPTO Patent Trial and Appeal Board (PTAB) conducts a Covered Business Method (CBM) review of the patent at issue. Although the Federal Circuit ultimately affirmed, it noted that the America Invents Act (AA) authorizes it to conduct a “searching review” of decisions to grant or deny stays pending CBM review.
You Infringe, So Now What? $368 Million Jury Damages Patent Award Nixed for Failure to Apportion – On September 16, 2014, in VirnetX, Inc. v. Cisco Systems, Inc. (Fed. Cir. 2014), the Federal Circuit Court of Appeals partially upheld the district court’s ruling of patent infringement for VirnetX against Apple and Cisco based on Apple’s FaceTime and VPN On Demand products. However, the Court determined that the jury award of $368 million was excessive and based on flawed damages calculations presented by VirnetX’s damages expert during trial because the calculations relied on the entire value of Apple’s products. The decision is notable because it clarifies the proper method to calculate a reasonable royalty in determinations of patent infringement for multi-component devices involving hardware and software. Royalty calculations that are based on the entire market value (or sales price) of the accused product — rather than the value of the allegedly-infringing technology — are routinely being rejected by the courts.
Patenting Software in the US as compared with Europe – This post compares and contrasts the United States approach to patentable subject after last term’s Alice v CLS decision, with that in the European Union. The bottom line is that the EU may be now more favorable to software claims than the US. Software is more easily patentable in Europe despite the existence of an express provision on the excludability of software. Article 52 of the EPC famously recites a list of ‘non-inventions’ that are excluded ‘as such’. The reading of this last condition has lead to a de minimis application of the provision. ‘Technical character’ is synonymous with invention in the EPO Board of Appeals’ (BoA) case law; any demonstration and degree of ‘technical character’ passes the patent eligibility threshold.
Can you lose your trademark even after registration? – Yes you can. Unless there is proper policing done, you are likely to lose your trademark rights. For example, what happens when you assign your trademark improperly? If you license or authorize third parties to use the mark and fail to adequately control the quality of the good or services offered under the trademark, which basically means that you have blindly assigned the trademark, then it will naturally result in you losing your rights.

September 29, 2014

Hard Times for Software Patents – Since the country’s top court struck down patents on a computer program that reduces risk in financial transactions, federal trial courts have rejected software patents in nine cases, according to Lex Machina, which supplies patent data to lawyers. The U.S. Court of Appeals for the Federal Circuit, which sets much of the nation’s patent law, has nixed software patents in three others. Among the invalidated patents was one involving an online dieting tool, another for a computer bingo game, and yet another for using a computer to convert reward points from one company’s loyalty program to another’s.
What’s Happening with Patents at the USPTO? Chief of Staff Byrnes has Answers! – On September 16, 2014, United States Patent and Trademark Office Chief of Staff Andrew Byrnes presented to the Boston Patent Law Association an update on new quality initiatives and the implementation of White House patent policies. Mr. Byrne outlined high-level policy objectives and how they are supported by the USPTO, remarking that support of such policies are more important than ever as intellectual property now permeates all phase of law and life. Mr. Byrnes stated that the USPTO is dedicated to ensuring that its Constitutional duty of promoting the arts and sciences is met, intellectual property law is balanced and fair, and that it keeps pace with our evolving world.
Respironics, Inc. v. Zoll Medical Corporation: Final Written Decision (Motion to Amend) IPR2013-00322 – In its Final Written Decision, the Board found that Petitioner established that claim 1 is unpatentable but failed to establish the unpatentability of claims 2, 4, 5, 8, 9, 16, 19, and 20. The Board also denied Patent Owner’s Motion to Amend and Petitioner’s Motion to Exclude Evidence. The takeaway from the case is that a patent owner must explain how each added limitation in a proposed substitute claim of a motion to amend finds written description support, and that requirement can become more burdensome depending on the amount of revisions made in the substitute claim.
Why the Supreme Court keeps smacking down America’s top patent court – In 1982, Congress created the Federal Circuit and gave it jurisdiction over all patent cases. It was an unusual arrangement — most other areas of law are overseen by a dozen generalist appeals courts whose jurisdiction is based on geography, not subject matter. Federal Circuit decisions are subject to review by the Supreme Court, but in the early years, the Supreme Court gave the Federal Circuit a long leash. The high court rarely reviewed Federal Circuit decisions, making the lower court the de facto “Supreme Court of patent law.” The results haven’t been pretty. During the 1980s and 1990s, the Federal Circuit made patent law increasingly favorable to patent holders. This produced a rapid increase in the number of patents and a surge in litigation.

September 23, 2014?
How to Protect Your Patent from Post Grant Proceedings – IP Watchdog, Gene Quinn: The American Invents Act (AIA) created three new ways to challenge the validity of claims in already issued patents. While the AIA was signed into law on September 16, 2011, the new post grant proceedings did not become effective until one year after the signing, on September 16, 2012. These three new post grant proceedings are post-grant review, inter partes review and covered business method review, which is a variety of post-grant review that is limited to business methods relating to the financial industry. Author explores methods of protecting one’s patent from these post grant proceedings.
Courts Nix More Software Patents- The Wall Street Journal, Ashby Jones: Since the country’s top court struck down patents on a computer program that reduces risk in financial transactions, federal trial courts have rejected software patents in nine cases, according to Lex Machina, which supplies patent data to lawyers. The U.S. Court of Appeals for the Federal Circuit, which sets much of the nation’s patent law, has nixed software patents in three others. Among the invalidated patents was one involving an online dieting tool, another for a computer bingo game, and yet another for using a computer to convert reward points from one company’s loyalty program to another’s.
Startups and Patent Trolls – SSRN, Colleen Chien: While patent assertion entities (“PAEs” or patent “trolls”) have received a lot of attention, little of it has focused on the distributional impacts of their demands. The impact of PAEs on startups is crucial, because startups contribute to job creation and innovation, making them potential targets and sources of patents. To assess the impact of trolls on startups, the author analyzed a comprehensive database of patent litigations from 2006 to the present, conducted a non-random survey of 223 tech company startups, 79 of which had received a demand, and interviewed nearly twenty entities with relevant knowledge of startup patent issues. The article finds that although large companies tend to dominate patent headlines, most unique defendants to troll suits are small. Companies with less than $100M annual revenue represent at least 66% of unique defendants to troll suits and at least 55% of unique defendants in troll suits make $10M per year or less.
Can Graffiti Be Copyrighted? – The Atlantic,Gabe Friedman: This past spring, Miami street artist David Anasagasti’s work started popping up in Japan and South America. It was the type of global exposure that Anasagasti didn’t want: American Eagle Outfitters had built an international advertising campaign around his best-known, oldest image—half-squinting, drowsy eyeballs layered on top of one another. In July, Anasagasti hired a lawyer and filed a copyright-infringement lawsuit, accusing American Eagle of stealing his work and seeking monetary damages. If it sounds novel to apply copyright to graffiti art, that’s because it is: Lawyers who work in this area say it’s not clear anyone has ever tried this in court.
Fenwick Launches Interactive PTAB Database to Help Patent Holders Analyze and Decode Post-Grant Decisions – Fenwick & West has launched an interactive PTAB Database that details proceedings filed with the USPTO’s Patent Trial and Appeal Board – providing quick and easy access to information about PTAB decisions. With the creation of PTAB by the U.S. Patent and Trademark Office, core aspects of resolving validity disputes are now governed by newly designed post-grant opposition proceedings. Fenwick’s database offers a searchable tool to follow the latest developments in the post-grant space and to examine key takeaways from recent PTAB decisions

September 22, 2014

Never underestimate the power of a post-grant proceeding – Inside Counsel, Hunter Keeton: In ePlus, Inc. v. Lawson Software, Inc., the Federal Circuit let the infringer off the hook, even sidestepping a contempt order and vacating an injunction entered by a judge in a nearly-completed patent litigation after the PTO invalidated the patent. The Federal Circuit extended the logic from three earlier cases which had found that a patent determined to be valid and infringed can still be invalidated by a later PTO reexamination. Those cases established the rule that even an award of damages for infringing a patent could be wiped away if the PTO invalidated the patent while any aspect of the court litigation remained unresolved.
Google, Inc. v. Whitserve LLC: Final Written Decision IPR2013-00249 – The National Law Review: The Federal Circuit’s construction of claim terms as well as any determinations regarding the disclosure of prior art references may not be persuasive to the Board in light of the broadest reasonable claim construction and preponderance of the evidence standards.
Design Patents §103 – Obvious to Whom and As Compared to What? – PatentlyO, Dennis Crouch: This is an increasing important and not fully resolved legal issue which should logically be addressed in the pending Fed. Cir. appeal of the nearly $1 billion infringement damages award in Apple v. Samsung, re the Apple design patents held infringed. That award seems to have inspired increased design patent assertions and design application filings. In that case Judge Koh had even called the application of the Supreme Courts controlling KSR decision on §103 an “open question” as to design patents! Apple, Inc. v. Samsung Electronics Co., Ltd., Case No.: II-CV-01846-LHK, Slip Op. at 19 (N.D. Cal. Dec. 2, 2011). These issues could also arise soon in PTO IPR PTAB decision appeals to the Fed. Circuit.
Federal court declares Virnet X patents valid, Apple VPN on Demand and FaceTime infringe- Apple’s iPhone 6 Plus has already proven to be a smash hit, but the company may not get to celebrate to its fullest extent. The US Court of Appeals for the Federal Circuit (USCAFC) ruled today that Apple’s VPN on Demand and FaceTime services infringe upon all four of Virnet X’s patents that were in question – and that Virnet X’s four patents (patents ‘135, ‘151, ‘504,’ and ‘211’) were valid.
AIPPI Congress Report 4: Should Europe embrace a patent linkage system? – IPKat, Eibhlin Vardy: Author was in attendance at the Pharma Day at the SPC session, and reports on what was a lively discussion on the topic of “Early Resolution Mechanisms for Patent Disputes Regarding Approved Drug Products” with Larry Welch of Eli Lilly(US) moderating panelists representing a range of views across the innovator / generic spectrum.

September 19, 2014

U.S. SC created confusion with June patent decision, former Federal Circuit judge says – The Southeast Texas Record, Jessica Karmasek: Paul Michel, the former chief judge of the U.S. Court of Appeals for the Federal Circuit, says the future of the nation’s economy is in jeopardy after the U.S. Supreme Court ruled in June that some software method and system patents are invalid. Michel was on the Federal Circuit, which handles all U.S. patent appeals, from 1988 until 2010. He served as its chief judge from 2004 until his retirement. He also submitted an amicus brief in the recently decided case of Alice Corporation Pty. Ltd. v. CLS Bank International and CLS Services Ltd. “The problem with this decision is that it has created vast uncertainty,” he said of Alice. “Now, none of the four categories (under Section 101 of the Patent Act) are clear anymore.”
Federal Circuit provides guidance on damages that eschews use of Nash Bargaining Solution (Virnetx v. Cisco) – AIPLA Newsstand, Kelley Drye: in Virnetx, Inc. v. Cisco Systems, No. 2013-1489, the Federal Circuit ruled that an expert’s damages testimony was not admissible. The court’s ruling provides guidance on underlying circumstances required to establish a royalty base and a royalty rate as well as questions regarding the viability of using the Nash Bargaining Solution’s 50/50 split of profits between the patent owner and infringer as a starting point to establish a reasonable royalty.
Changes Ahead for the Digital Millennium Copyright Act? – Legal Times, Andrew Ramonas: Representatives of software makers on Wednesday warned members of Congress against making sweeping reforms of digital copyright law as the House considers changes to the U.S. copyright system. Appearing before a House panel, Jonathan Zuck, president of ACT | The App Association, and Christian Genetski, general counsel of the Entertainment Software Association, said lawmakers should move cautiously on any updates to the Digital Millennium Copyright Act (DMCA), which Congress passed in 1998 to prevent digital piracy. The House Judiciary Committee’s courts, intellectual property and the Internet subcommittee heard the testimony from Zuck and Genetski as part of the panel’s ongoing review of potential copyright system updates intended to foster innovation in the digital age.
Amicus briefs shape intellectual property law – Inside Counsel, Craig Metcalf: Friend-of-the court briefs make good sense as a tool of influencing IP policy. They are especially useful in informing and persuading appellate courts, whose tendency is to focus on questions of law, unmixed with factual considerations unique to a particular case. A party filing an amicus brief can discuss the legal and policy effects of the case without the need to delve into factual disputes that often consume the attention of trial courts. Contests over broad principles of IP policy and statutory interpretation mean IP cases before appellate courts often hold the potential of affecting business operations across the country even when a company is not involved in a particular case.
U.S. trademark prosecution: Online use may miss the mark – Inside Counsel, Marsha Hoover: Marsha Hoover: Different standards apply to the acceptability of website specimens for services and goods. To demonstrate use of a mark for a service, the webpage must show a direct association between the services and the mark. If it does not think that the public viewing the specimen would regard the mark as a source-identifier, then the USPTO will refuse registration; slapping the SM symbol on the mark will not solve the problem.
September 18, 2014
Court finds patent indefiniteness in unobtrusive claims – In Interval Licensing LLC v. AOL, Inc., the Federal Circuit applied the test for patent indefiniteness set forth in the recent Supreme Court decision in Nautilus, Inc. v. Biosig Instruments, and found that claims reciting an “unobtrusive” display were invalid. In so doing, the Federal Circuit noted the “highly subjective” nature of the claim language and lack of guidance in the specification and prosecution history as to the meaning of the term.
Considerations for When to Disclose Patent Prior Art – Discovering that a client’s competitor has a pending, published patent application can provide both opportunities and challenges, particularly if the client has information that predates the patent application and that could reasonably be considered to be prior art. Having a strong prior art reference is certainly helpful, but also raises strategic questions. Should the reference be submitted for consideration to the United States Patent and Trademark Office (USPTO) while the application is pending, should the reference be used later to challenge validity in court if a patent issues, or both?
Supreme Court ruling has wiped out 11 “do it on a computer” patents so far – There have been no less than 11 federal judicial rulings striking down patents as “abstract” since the US Supreme Court’s June 26 decision in Alice v. CLS Bank. It is without a doubt a high number. The Alice case was recognized as a landmark decision when it came down, and what’s happened since suggests the ramifications may be broader than first thought. Author provides a summary, rounding up the 11 rulings that have come down thus far.
A Tale Of Two “Patent Troll” Cases: Contrasting Recent Developments In The Vermont And Nebraska AGs’ Litigations – On 20 June 2014, the Federal Court handed down its decision in appeals against decisions of the Commissioner of Patents concerning two patent applications filed by FieldTurf Tarkett Inc (and opposed by TigerTurf International Limited) relating to synthetic turf. In relation to the first patent application, Justice Jagot overturned the Commissioner’s decision that the claimed invention lacked novelty, inventive step and clarity. In finding that the invention claimed in the first application was novel, Justice Jagot found that certain evidence of prior uses was tainted by the witness’ knowledge of the invention and was therefore unreliable. The decision highlights the different evidentiary considerations that apply to prior uses and the difficulties that may arise if the evidence is given with knowledge of the claimed invention

September 17, 2014

Why FRAND Commitments are Not (usually) Contracts – PatentlyO: FRAND “fair, reasonable and non-discriminatory” commitments generally arise when a patent holder wishes to assure the marketplace that it will not seek to block implementation of a common technology platform or product interoperability standard. Prof. Lemley argues that the conventional common law contract system is a poor fit for the enforcement of most FRAND commitments, as the simplified offer-acceptance-consideration model does not reflect the actual manner in which most FRAND commitments are made. In addition, these commitments are typically too brief to set forth any of the relevant details of the promised license agreement.
New Copyright Compendium Provides Some Answers For Website Owners – Mondaq – Mark Sableman: the Copyright Office’s newly issued 1,222-page “Compendium of U.S. Copyright Office Practices” issued on August 19, 2014, to become effective in December 2014. The manual, which focuses on issues that the copyright office handles in the course of processing applications for copyright registrations, is helpful on some Internet-related copyright concerns. The copyright office has developed a number of standards including: Exact copies of another work can’t be copyrighted, works produced by machines or a “mere mechanical process” won’t qualify, and a work must be created by a human being.
Judicial Capacities and Patent Claim Construction: An Ordinary Reader Standard – Scholarly Article – Greg Reilly: The problems with claim construction result from the Federal Circuit’s inability to resolve whether claim terms should be given (1) the general, acontextual meaning they would have to a skilled person in the field; (2) the specific meaning they have in the context of the patent; or (3) some combination of the two. The claim construction debate largely overlooks the generalist judges who must implement claim construction. This Article attempts to fills that gap, concluding that existing approaches are difficult, costly, and error prone for generalist judges because they force the judge to step into the shoes of a scientist. The author argues that is time to abandon the legal fiction that claims should be construed from the perspective of a skilled person in the field—instead, judges should construe claims from the perspective of an ordinary reader discerning meaning from the context of the patent.
USPTO Announces 2014 National Trademark Expo Exhibitors – The US Commerce Department’s United States Patent and Trademark Office (USPTO) announced the exhibitors for the 2014 National Trademark Expo, which will be held October 17 – 18, 2014 at the USPTO headquarters in Alexandria, Virginia. According to the USPTO, the free, two-day event helps support the mission of the agency by educating the public about the value of trademarks and their importance in the global marketplace through informational seminars, children’s workshops, displays of authentic and counterfeit goods, and other exhibits featuring registered trademarks.
German industry lobby calls for ‘patent box’ tax breaks – Germany’s main business lobby on Monday called for the government to give so-called “patent box” tax breaks on profits generated from patented research to encourage innovation in the German economy. “Targeted lower taxation of profits from patents – a so-called patent box – makes it considerably more attractive to do research activities in Germany,” Markus Kerber, managing director of the BDI industry association, said in a statement.

September 16, 2014

A Small Rules Change May Make Life Much Harder For Patent Trolls – Forbes, Daniel Fisher: At its meeting within the U.S. Supreme Court building on Tuesday, the Judicial Conference of the United States will vote on whether to abolish Rule 84 of the Federal Rules of Civil Procedure. The change, if adopted by the committee and approved by the U.S. Supreme Court and Congress, would mean the four-paragraph Form 18 no longer governs patent disputes and litigants might be held to the stricter standards under the Supreme Court’s Iqbal and Twombly decisions that require plaintiffs to state more than bare allegations to survive a motion to dismiss. Such bare-bones claims make it easy for NPEs to file shotgun-style complaints against a number of targets and settle them for nuisance value.
On the first Monday in October, will IP still be in the Supreme Court’s spotlight? – Inside Counsel: The Supreme Court will kick off its 2014 term on Oct. 6. Will the Court maintain its focus on intellectual property law issues? The 2013 term set a high-water mark for IP, as the Court decided six patent, two trademark and two copyright cases. Taken together, IP issues featured in more than 10 percent of last term’s docket.
European Union: Store Designs May Be Registered As Trade Marks – Mondaq, Robyn Chatwood: In a decision which will be welcomed by global retailers and franchisors, the Court of Justice of the European Union (CJEU) ruled on 10 July 2014 that a retail store design may – subject to certain conditions – be registered as a trade mark. The decision is a significant win for Apple Inc., who had sought to register its distinctive store design as a trade mark in the European Union. However, the decision also paves the way for a variety of others – such as franchisors, retailers, hoteliers, restaurateurs and professional services firms who operate from premises using a unique design which is not simply functional.
BCP Customer Partnership Meeting – PatentDocs: The Biotechnology/chemical/pharmaceutical (BCP) customer partnership meeting will be held on Wednesday, September 17, 2014. The latest BCP meeting will be the Office’s first Bicoastal BCP (BCBCP) event, with the meeting being held simultaneously in the Madison Auditorium on the USPTO Alexandria Campus (East Coast) and Engineering Building Conference Room of San Jose State University (West Coast). During the inaugural BCBCP, participants will be able to interact with Office personnel in person on both coasts, or alternatively, via webcast.
Sued As A Young Startup? Don’t Surrender – Tech Crunch, David Soofian: Two recent changes in patent law are turning the tables and giving the accused the opportunity to attack the validity of weak patents—the most valuable assets a patent troll has—without having to go through the cost of a full-blown litigation: (1) the Supreme Court’s recent Alice opinion paved the way for early challenges to patents that try and monopolize algorithms or basic ideas; and (2) the America Invents Act created a quick mini-trial in the United States Patent Office for challenges to the inventiveness of a patent.

September 12, 2014

U.S. Bancorp v. Solutran, Inc. (PTAB 2014) –PatentDocs- U.S. Bancorp v. Solutran, Inc. was a covered business method review before the Office’s Patent Trial and Appeal Board. While this case does not carry the weight of precedent, it does provide a glimpse at what some of the Office’s administrative patent judges may be thinking regarding § 101.
United States: Digital Image Processing Claims Held Patent Ineligible Under § 101- In Digitech Image Technologies, LLC v. Electronics for Imaging, Inc., Nos. 13-1600 to -1618 (Fed. Cir. July 11, 2014), the Federal Circuit held that the asserted claims of U.S. Patent No. 6,128,415 (“the ‘415 patent”) were invalid under 35 U.S.C. § 101. The Court first held that the device profile described and claimed in the ‘415 patent “is not a tangible or physical thing and thus does not fall within any of the categories of eligible subject matter.” The Court next held that, although the asserted method claims undisputedly described a process, they nevertheless were directed to a patent-ineligible abstract idea. The Court thus affirmed the district court’s SJ decision that the asserted claims of the ‘415 patent were not patent eligible under § 101.
No, ‘Alice’ Wasn’t a ‘Death Knell’ for Software Patents – Author argues that inventors, companies, and investors are overly worried that computer-implemented inventions will no longer be paten eligible after Alice Corp v. CLS Bank. “…such concerns are largely misplaced, as the court solidly upheld the patent eligibility of computer-implemented inventions and continued to refuse to recognize a separate exception for business methods.”
First Biosimilar Drugs Challenge Unfolds in Federal Circuit – In the first appellate challenge to a new regulatory path for creating generic versions of biologic medicines derived from living organisms, advocates for Sandoz Inc. and Amgen Inc. on Wednesday faced tough questions from a three-judge panel at the U.S. Court of
Appeals for the Federal Circuit. The question before the court is whether Sandoz can file a declaratory judgment against Amgen to find out if its version of the medicine infringes the Enbrel patents before it seeks approval from the U.S. Food and Drug Administration?
BIO Highlights the Value of Intellectual Property for Animal Biotechnology at the 2014 Livestock Biotech Summit – BUSINESS WIRE)–The Biotechnology Industry Organization (BIO) today announced that it will showcase a series of unique sessions at this year’s Livestock Biotech Summit, including a panel highlighting the value of intellectual property in animal biotechnology. Polsinelli PC will sponsor two sessions, one on the importance of protecting patent rights to help spur innovation and the second on utilizing biotechnology to better human and animal health. BIO’s Livestock Biotech Summit will be held September 16-18, 2014, at the Sioux Falls Convention Center in Sioux Falls, SD.

September 11, 2014

Judge Bryson: Computerized Loyalty-Point Conversion System Not Patent Eligible – Federal Circuit Judge Bryson – sitting by designation in the Eastern District of Texas – has determined on the pleadings that Loyalty’s reward-program patent is ineligible based upon the recent Supreme Court cases of Alice Corporation Pty. Ltd. v. CLS Bank International, 134 S.Ct. 2347 (2014) and Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S.Ct. 1289 (2012).
Can Athletes Claim Copyright in Their Sporting Performances? – The crux of the question is whether the athletes are, in the context of their sporting event, performing or producing a qualifying “work.” If they are, then they would have a claim over the exclusive rights to control the distribution of their “work.”
Megaupload, ViaSat-Loral, Twitter: Intellectual Property – Kim Dotcom, founder of cloud storage company Megaupload Ltd. whose extradition is sought by U.S. authorities, will get back some of the material seized from his computers and personal devices during a raid of his home by New Zealand police two years ago, under an appeals court ruling yesterday in that nation, according to his U.S. lawyer, Ira Rothken; ViaSat Inc. (VSAT) reached a settlement of all outstanding claims related to litigation with Space Systems/Loral Inc. and Loral Space & Communications Inc. (LORL) for breach of contract and patent infringement.
Australian federal court rules isolated genetic material can be patented – In June 2013, the US Supreme Court held that mutant BRCA 1 human DNA, isolated from the human body, is not a patentable subject matter under US patent law. Last Friday, an Australian full federal court held that a company may patent genetic material that has been extracted from the human body, in a move that may have serious repercussions for the future of medical research in Australia.

September 10, 2014

Parody in the EU: – Authors offer review of US Supreme Court decision in Campbell v Acuff-Rose Music, Inc, 510 U 569(1994), where the Court established the standard for determining the applicability of the fair use parody defense in copyright infringement cases. A recent nonbinding opinion of the Advocate General of the Court of Justice of the European Union may clarify the important aspects of the parody defense in the EU.
Effect of foreign patent proceedings on U.S. patent litigation – “If a similar patent has been prosecuted in a foreign jurisdiction, there may be a question as to whether a court can rely on statements made during the foreign prosecution for the purposes of interpreting the claim language. There have been cases where the courts have allowed the introduction of representations made to a foreign patent office and have found those statements to be relevant evidence. At other times, the courts have declined to allow such evidence due in part to the varying legal and procedural standards applied in foreign patent offices. Nevertheless, it is useful to keep in mind that statements made during foreign prosecution could be raised in a related U.S. litigation.”
Patent Infringement Litigation: No Appellate Jurisdiction Over an Interlocutory Contempt Order The National Law Review, A. Sokolov- Addressing whether an interlocutory contempt order stemming from a violation of an existing injunction is directly appealable, the U.S. Court of Appeals for the Federal Circuit dismissed the appeal for lack of jurisdiction because the contempt order was not a “final” judgment and did not modify the injunction. Arlington Industries, Inc. v. Bridgeport Fittings, Inc., Case No. 13-1357 (Fed. Cir., July 17, 2014) (Hughes, J.).
Federal Circuit Rejects Writ of Mandamus Concerning Waiver of Argument – “In a brief order, the U.S. Court of Appeals for the Federal Circuit denied a writ of mandamus filed by Nokia Corporation seeking to compel the U.S. International Trade Commission to consider its non-infringement contentions on remand. In re Nokia Inc. and Nokia Corp., Case No. 14-133 (Fed. Cir. July 24, 2014) (per curiam) (Newman, J., dissenting).”
IP research paper reveals the importance of trade secrets – International Chamber of Commerce: The contribution of trade secrets to knowledge diffusion and collaborative innovation is the focus of the latest intellectual property research paper from the International Chamber of Commerce (ICC). The five-paper series explores how intellectual property (IP) interacts with decisions, transactions and processes related to technology development and dissemination.

September 9, 2014

Court Finds Patent Invalid; Then Orders Defendant to Stop Infringing – PatentlyO: “Following the Supreme Court’s equitable relief decision in eBay, many patentees have found it difficult to obtain injunctive relief to stop ongoing infringement – even after final judgment that the patent is both valid and infringed. In a recent decision, the District Court Judge Blake (D.Md.) seemingly flipped eBay on its head by enjoining TWi Pharma from making or selling a generic version of Par’s patented Megace ES formulary. The upside-down element of the decision is that the order granting the injunction issued only after the court found the patent claims invalid as obvious. Par Pharma v. TWi Pharma, 1-11-cv-02466 (MDD August 12, 2014, Order).”
Whether a Judgment in a Related Foreign Patent Litigation can be Introduced as Evidence in U.S. Litigation (Link to Case) – Inside Counsel – The issue of whether a judgment in a related foreign patent litigation can be introduced as evidence in U.S. litigation was recently raised in a case before the Court of Appeals for the Federal Circuit. In that case, a German patent litigation resulted in a finding of infringement and injunction; the plaintiff in a related U.S. action argued that the U.S. court should adopt the German judgment “as an admission of infringement of a virtually identical claim.” The Federal Circuit refused to do so, stating that “foreign patent determinations are not binding in litigation concerning United States patents and patent law.”
Utility Patent Trends Gleaned from the IPO’s 2014 IP Record – The National Law Rreview, M. Rygiel: The Intellectual Property Owners’ Association (IPO) recently released its 2014 IP Record, an annual report detailing intellectual property trends in the United States and the top five patent offices from around the world… the report provides a broad overview of the global patent landscape and makes it possible to understand and analyze trends in patent prosecution and litigation.
Facebook Page Likes/Twitter Page Follows – Whose Property is it? – A Florida federal court judge in the Stacey Mattocks vs. Black Entertainment Television Network ruled that a Facebook ‘like’ cannot be owned by anyone. US District Judge James Cohn stated that, “Given the tenuous relationship between ‘likes’ on a Facebook Page and the creator of the Page, the ‘likes’ cannot be converted in the same manner as goodwill or other intangible business interests.”
Intellectual property is not an asset class, but IP insurance might be – Intellectual Asset Management, C. Donegan – “There is one market in its infancy where intellectual property does stand the chance to become a true asset class: insurance. Unlike intellectual property itself, as a derivative risk IP insurance contracts may be standardized, are highly scalable and can operate within a well-established common framework of regulation and law.”

September 8, 2014

Allergan, Inc. v. Apotex, Inc. (Fed. Cir. 2014) – “In a not particularly well-written opinion that breaks no new ground, the Federal Circuit considered a consolidated appeal of two patents directed to methods of promoting hair growth, including, in particular, eyelash hair growth using compounds and analogs that were previously known for their utility in treating glaucoma. One issue that arose with respect to the ‘404 was the date of invention, important for determining whether certain Brandt publications were prior art. In brief, the Federal Circuit reversed the lower court’s finding with respect to the date of invention because the panel found that none of the documentary evidence was directed to the claimed invention, i.e., topical application of bimatoprost.”
United States: Federal Circuit Sidesteps Constitutionality Of AIA First-To-File Provision – MadStad Eng’g, Inc. v. USPTO- The U.S. Court of Appeals for the Federal Circuit faced an issue of first impression when a named inventor on three patents challenged the first-inventor-to-file provision of the America Invents Act (AIA) as unconstitutional under Article I, Section 8, Clause 8 of the United States Constitution. Affirming the legal conclusion of the district court that appellants lacked standing to bring the declaratory judgment action, the unanimous panel did not reach the constitutional arguments. MadStad Eng’g, Inc. v. USPTO, Case Nos. 13-1511, -1512 (Fed. Cir., July 1, 2014) (O’Malley, J.).
Copyright law protects U. of Missouri course syllabi from public disclosure, state court rules – ” The University of Missouri System does not have to release course syllabi because they are protected by copyright laws, a state appellate court ruled last week – a decision the National Council of Teacher Quality plans to appeal to the U.S. Supreme Court.”
Tesco, Conair, Latham, Yahoo!: Intellectual Property – Tesco Corp. (TESO)’s patent suit against Weatherford International Plc (WFT) was dismissed by a Houston federal court after the judge found that Tesco’s counsel misrepresented facts about a depiction of the disputed technology.
Patent Drafting: Broadening Statements vs. Boilerplate Language IPWatchdog – “Patent practitioners have traditionally added a few lines, or a paragraph or so of boilerplate to applications, but lately these incantations can seem more important than the disclosure. Indeed, one can now easily find instances in which the volume of boilerplate actually exceeds the volume of disclosure, in some cases by a factor of two or more. Most boilerplate consists of entreaties seeking to avoid narrow claim constructions, including items such as eight lines devoted to how the patentee would like to have the word ‘and’ construed.”

September 5, 2014

Two-Party Market: Presumption of Confusion and Injury – Clarifying applicable presumptions in Lanham Act false advertising cases, the U.S. Court of Appeals for the Second Circuit affirmed a district court’s use of presumptions of consumer confusion and injury in a two-party market where deliberate deception and literal falsehood had been proven, even though the injured party was not actually named in the ads. Merck Eprova AG v. Gnosis S.p.A., et al., Case No. 12-4218 (2d. Cir., July 29, 2014) (Pooler, J.).
China remains world’s largest trademark holder – “BEIJING, Sept. 2 (Xinhua) — China continues to top the world in the number of trademarks registered, driven in part by government encouragement to improve innovation and competitiveness. The number of valid trademarks registered in China totaled 7.61 million by the end of June, data from the State Administration for Industry & Commerce (SAIC) showed on Tuesday.”
IPR Update – Prosecution Bars – Patent Docs by Williams, A.- With the advent of the PTAB’s post-issuance proceedings, the issue of whether practice before the Board should be subject to prosecution bars needed to be resolved. Prosecution bars are generally included in Protective Orders or Discovery Confidentiality Orders to prevent litigation counsel from using the confidential information produced in a lawsuit during subsequent prosecution before the Patent Office. Author reviews the Federal Circuit’s In re Deutsche Bank Trust Co. Americas case, which provided factors to evaluate a party’s request for an exemption from a prosecution bar.
United States: Failure Of Appellant To Appeal Damages Award Precludes District Court To Reconsider Damages After Partial Reversal – “The U.S. Court of Appeals for the Federal Circuit affirmed a district court’s denial of a motion to modify a damages award following the partially successful appeal of the infringement judgment on which the award was based. Retractable Techs., Inc. v. Becton, Dickinson, and Co., Case No. 13-1567 (Fed. Cir., July 7, 2014) (Linn, J.).”
ALS charity drops ice bucket challenge trademark attempt – On September 1, the Amyotrophic Lateral Sclerosis Association (ALSA) attempted to trademark the “ice bucket challenge,” sparking an outcry since the name has been used to raise money for charities before and ALSA did not invent the phrase. On September 3, ALSA has dropped its controversial application.

September 4, 2014

No “Correct” Pronunciation for Trademarks that Are Unrecognized Words – “The U.S. Court of Appeals for the Federal Circuit, in affirming a Trademark Trial and Appeal Board (the Board) ruling finding no likelihood of confusion between the trademarks STONSHIELD and ARMORSTONE, cautioned that the Board improperly forced a pronunciation of the appellant’s mark that was unsupported by evidence. StonCor Group, Inc. v. Specialty Coatings, Inc., Case No. 13-1448 (Fed. Cir., Jul. 16, 2014) (Hughes, J.).”
The frightening emergence of government patent trolls – Chinese government-controlled patent-operations fund established in April was seeded with the equivalent of $50 billion to assist in “the development and acquisition of core patents to boost market power and profitability of domestic companies.” Author argues that the fund may be wielded offensively in the global conflict for technological supremacy, as evidenced by recent investigations of Microsoft and Symantec.
Injunction and Civil Contempt Remedy Vacated After PTO Cancels Claim in Reexamination – “Addressing whether an injunction and civil contempt were proper after the sole claim on which the injunction was based was cancelled, the U.S. Court of Appeals for the Federal Circuit vacated a lower court’s injunction and civil contempt remedy, finding that the cancellation of the claim made it void ab initio and thus unable to support an injunction or lead to civil contempt remedies. ePlus, Inc. v. Lawson Software, Inc., Case Nos. 13-1506, -1587 (Fed. Cir., July 25, 2014) (Dyk, J.) (O’Malley, J., dissenting).”
Supreme Court holds abstract ideas implemented on generic computer ineligible (Link to June 19 case) – Alice Corp Ltd’s four patents at issue claimed computerized systems, methods and media designed to mitigate settlement risk by using third parties to settle financial obligations between two parties engaged in a transaction. The claims are drawn to the abstract idea of “intermediated settlement.” On June 19, 2014, a unanimous Supreme Court in Alice Corp Pty Ltd v CLS Bank Int’l, 13-298 (June 19 2014) held that “merely requiring a generic computer to implement an abstract idea fails to transform the abstract idea into a patent-eligible invention, and affirmed the Federal Circuit’s judgment finding claims directed to mitigating settlement risk invalid under 35 USC § 101.”

September 3, 2014

Lawsuit Against Government for Buying Allegedly Infringing Missile Systems Can Go Forward (Link to Case)- Ensign-Bickford Aerospace and Defense Co.’s claim of infringement against a government contractor in district court was for patent infringement unrelated to government purposes. In Ensign-Bickford Aerospace & Defense Co. v. United States, Fed. Cl., No. 1:13-cv-00057-EDK, 8/28/14, the government argued that because the patent owner did not wait for final judgment in a related district court action, the exercise of jurisdiction by the court was barred by 28 U.S.C. Section 1500. However, the court held that 28 U.S.C. Section 1500 does not give the government an out, and that the district court’s dismissal was enough to remove the “pending” status of the case.
Navigating the Minefield: Avoiding Estoppel in Preliminary Proceedings at the Patent Trial and Appeal Board – Author surveys newly established trial proceedings under the America Invents Act, including inter partes review, post-grant review, and the transitional program for covered business method patents. He outlines potential perils of the new measures, including the risk of creating file history estoppel in responses submitted during these proceedings.
Fed. Cir. Tells District Judge to Try Again, Without “Orders on Confusion” (Link to Case) – The Aug. 28 nonprecedential opinion in KI Ventures, LLC v. Fry’s Elecs., Inc., Fed. Cir., No. 2014-1187, 8/28/14 enumerated Southern District of Texas Judge Lynn M. Hughes’s many mistakes and misunderstanding, including his issuing an “Order on Confusion” after KI Ventures submitted its proposed claim constructions. Hughes’s dismissal of the patent infringement case was reversed, granting KI another chance with the Southern District of Texas judge that previously threw out its case “for recalcitrant non-compliance with Court orders.”
High Bar for Discovery Motions in Intellectual Property Rights (IPRs): Permobil Inc. v. Pridemobility Products Corp. – “Addressing a patent owner’s motion to compel a petitioner to produce documents concerning petitioner’s alleged copying in an inter partes review (IPR), the U.S. Patent and Trademark Office’s (PTO) Patent Trial and Appeal Board (PTAB, or the Board) sided with petitioner and denied the motion, finding that the patent owner had not shown that the requested discovery was inconsistent with any of petitioner’s positions. Permobil Inc. v. Pridemobility Products Corp., Case No. IPR2013-00407 (PTAB, July 2, 2014) (McNamara, APJ).”
White House Nominates New Chief of IP Enforcement – The White House has named Washington DC attorney Danny Marti as the next head of intellectual property enforcement, a position that has remained unfilled for a year. Marti is currently a managing partner at Kilpatrick Townsend and Stockton LLP, and will fill the role left by Victoria Espinel, who stepped down to head the anti-piracy Business Software Alliance.

September 2, 2014

Corporations Cannot Be Malicious, At Least Under California Law – In Taiwan Semiconductor Mfg. Co., LTD., v. Tela Innovations, Inc., the court found that corporations, unlike individuals, cannot be held liable for “willful and malicious conduct” for purposes of punitive damages liability in California. Rather, only individual officers or directors are capable of such conduct.
Medical device patent law: Changes, subtleties and tricks-of-the-trade secrets – Trade group Biocom’s DeviceFest in San Diego addressed a number of the changes to patent law under the America Invent’s Act as they apply to medical device companies.
Patent Trolls V. Their Corporate Targets: In View of Recent Legislative, Judicial and Market Changes, Companies Have Distinct Advantages Over NPEs – Author surveys past decade of Non-Practicing Entity (NPE) litigation, and finds that defendants have generally benefited from several leverage points, including a growing corpus of favorable judicial rulings.
Firms seek more law grads with science, engineering degrees – Hiring attorneys are turning increasingly to the country’s top science and tech graduate schools to recruit future IP attorneys. Recruiters report that “IP is one of the rare areas of law where demand for attorneys outstrips supply,” and positions for graduates with hard sciences degrees continue to go unfilled.
USPTO to Host AIA Roadshow in Seven Cities Nationwide – “The U.S. Department of Commerce’s United States Patent and Trademark Office (USPTO) announced that it will host seven roadshows across the country between September 16 and October 9, 2014, to increase understanding of the First Inventor to File (FITF) provisions of the America Invents Act (AIA).”

August 26, 2014

When Can You Be Sued For Introducing Copyrighted Works At Trial? Almost Never, But Plaintiffs Keep Trying – Many plaintiffs have tried, and failed, to use copyright law to keep evidence out of civil and criminal trials, or to punish the parties who introduced the evidence. However this approach inevitably fails. As Professor Nimmer once wrote, “it seems inconceivable that any court would hold such reproduction to constitute infringement either by the government or by the individual parties responsible for offering the work in evidence.”
US Officials Rule That Monkey Selfies Cannot Be Copyrighted – The US Copyright Office issued an update, ruling that it “will not register works produced by nature, animals, or plants,” and that it “cannot register a work purportedly created by divine or supernatural beings.” The update goes on to list several examples, including that “a photograph taken by a monkey” could not be copyrighted by the agency.
Hawaii-based Tiki Shark Art settles copyright infringement case – Tiki Shark Art Inc., which was recently ranked No. 10 on PBN’s list of Hawaii’s 50 fastest-growing small businesses, has settled its copyright infringement lawsuit against CafePress. Brad Parker, owner of Kailua-Kona-based Tiki Shark Art, claimed his art appeared on beachwear sold on CafePress.com without his permission.
Patent reveals how Twitter could protect users from malware on the mobile Web – A Twitter patent granted for detecting malware describes a method for assessing the “probability of the webpage being malicious” by crawling website with an “emulated mobile device to cause behaviors to occur which may be malicious.”
USPTO Proposed Rules for Transparency of Patent Ownership – Patent Baristas: In January 2014, the USPTO published proposed rules to increase the transparency of patent ownership information for patent applications and issued patents. The proposed changes include requirements that the attributable owner be identified during the pendency of a patent application and at specific benchmarks during the life of the patent.

August 25, 2014

Patent Plea Ping Pong – One of the defendants in the series of Myriad Genetics lawsuits last year, GeneDx, has struck back at Myriad, attempting to nullify other patents held by the company. GeneDx is taking advantage of the new inter partes review procedures established by the America Invents Act of 2011.
A Conversation About Software and Patents: On the Record with Bob Zeidman – IP Watchdog interview with software expert Bob Zeidman, president and founder of Software Analysis and Forensic Engineering Corp. Zeidman and Gene Quinn discuss the Alice v. CLS Bank decision and ways an attorney can build a specification to satisfy the Alice standard.
Accelerating ex parte PTAB Appeals: For a Fee – PatentlyO- A 25,000 case backlog of pending ex parte appeals persists at the Patent Trial and Appeal Board. “Rather than dealing with its poor statistics, the PTAB appears to have simply stopped publishing them.” To respond to the demand for appeals, the author suggests a $5,000 fee for accelerated PTAB decisions.
Mass Layoffs Hit Intellectual Ventures’ Patent Factory – Intellectual Ventures is laying off about 20 percent of its employees. The move is thought to result, in part, from the departure of many of its original Silicon Valley investors, including Google and Intel.
Fabergé Wins Trademark Dispute – “Fabergé, the luxury jewelry brand, has received a favorable judgment in the U.S. District Court, Eastern District of New York, after suing a Brooklyn restaurant for using its name and colors. The judgment comes only a few years after Fabergé lost a legal battle in Germany against the creation of a Fabergé museum without their permission, and gives the brand an advantage in the US to protect its trademark.”
International Intellectual Property recruiters, Fellows and Associates, head to Toronto for the 44th AIPPI World Intellectual Property Congress – The Fellows and Associates team of The World Intellectual Property Congress meet in Toronto next month to offer recruitment services and share strategic advice with firms around the world.

August 22, 2014

Digital libraries as modern Charon’s obol? – Author tackles the question of Who inherits your iTunes Library. Finding: the use of digital files is limited to Apple devices used by the account holder. The license acquired is non-transferable.
After trademark issue, small brewery in Eastwood changes name — to Eastwood Brewing Co. – Owner-brewer Pete Kirkgasser made the change after hearing from the Firestone Walker Brewing Co. of California. That brewery, founded in 1996 in Paso Robles, has a trademark for a beer called Double Barrel Ale.
Algae biofuel reboot: New funding, new patent, new opportunities – William & Mary scientists are rethinking their algae biofuel initiative, aiming to build on opportunities brought about by new processes, new funding and newly patented apparatus. The goal of the initiative is to simultaneously remove excess algae from waterways and use the harvested algae as fuelstock.
Hopes Dampened For Copyright Exceptions For Libraries/Archives At WIPO – Facing resistance from the EU, The World Intellectual Property Organization copyright committee recently had to declare defeat as they could not come to an agreement to formulate a treaty providing copyright exceptions for libraries and archives.
Can The Dot Pharmacy New Generic Domain Be Impartial? – The domain “.pharmacy” has been awarded to a United States pharmacy association. While the association insists it will work in an impartial manner to ensure safety of online pharmaceutical sales, Gabriel Levit, vice-president of PharmacyChecker.com notes that main funders of the association are Eli Lily, Merck and Pfizer, raising the question of whether the companies might play too big a role in creating rules for online pharmacies.

August 21, 2014

Pokémon targets 3D printed design, citing copyright infringement – Netherlands company Shapeways accused by The Pokemon Compnay International of infringing on the design of popular character Bulbasaur. Shapeways runs a website which shares 3D printed designs, raising the possibility that 3D printed materials will be increasingly targeted by copyright owners.
Intel Successfully Defends its Patent Case but Owes its Own Attorneys $9 Million for the Defense. – Article explores exception to the usual rule that each side pays its own attorney fees. “For a successful defendant such as Intel here, the outcome of the lawsuit is likely still a seven-figure payout to its defense team (paid by the winning defendant).”
Ridiculous Patent Troll Gets Stomped By CAFC, Just Months After Being Awarded A Huge Chunk Of Google’s Ad Revenue – Non-practicing entity Vringo was approaching successful settlement with Microsoft and Google until the CAFC applied the CLS Bank v. Alice treatment, invalidating their broad software patents.
Does Idaho Need a Patent and Trademark Resource Center? – Three states (Idaho, New Mexico, and Oregon) do not have a Patent and Trademark Resource Center. Albertsons Library at Boise State University is investigating the idea of serving as such a resource center.
Gmail Users Should Check Their Spam Folder for USPTO Email – Gmail (and Google Apps) users beware! Gmail’s spam filter has been flagging official email from the USPTO as spam.
This is Fiction, not Trademark Infringement: A Cat (Woman) in Need of a Clean Slate – “The Seventh Circuit Court affirmed on August 14 that a fictional company or product cannot infringe the trademark of a real company or product. The case is Fortres Grand Corporation v.Warner Bros., no. 12-cv-00535.”

August 20, 2014

Six Months of the New gTLD Uniform Rapid Suspension System: What Brand Owners Need to Know – The Uniform Rapid Suspension System (URS) is an abbreviated dispute-resolution procedure for clear cases of cybersquatting. The URS has a higher standard of proof than the Uniform Dispute Resolution Procedure (UDRP), but the URS is substantially less expensive and time-consuming than the UDRP. Article summarizes state of the URS based on its first 6 months of operation.
Judge Mayer Raises 101 When Not In Issue: Other Panelists Don’t – PatentlyO article presents excerpt of I/P Engine, Inc. v. AOL Inc. (Fed. Cir. Aug. 15, 2014) (per curiam), which the author considers a “counter-punch to Ultramercial.”
Uploading goal videos online? A copyright infringement, says FAPL. Is it? – On August 15, the Football Association Premier League (FAPL), which runs the English Premier League, has said that it is going to “clamp down on fans posting unofficial videos of goals online”. But is there a potential copyright infringement in the first place?
VC/DC: The Patent Crisis Deteriorates – ” Last month, Apple and Google called a truce. Most recently, Apple and Samsung agreed to end all of their competing lawsuits outside the U.S., with hopes that a few California-based cases will soon be resolved as well.”
Conference & CLE Calendar – PatentDocs summary of conferences and seminars. Includes August 20 Advanced Patent Law Seminar (Chisum Patent Academy) and August conferences discussing strategies for patent drafting and technology transfer tactics in light of Alice Corp. v. CLS Bank.
Public investment in higher education research: the Australian government wants patents, not publications! – The Australian Minister of Industry, Hon. Ian Macfarlane, recently suggested (here) that public investment in higher education research should be linked to the number of patents granted to each University. Author argues that the proposition is incompatible with public policy imperatives.

August 19, 2014

Upcoming Events – PatentlyO summarizes a number of IP-related upcoming events, including the Intellectual Property Owners Association (IPO) annual meeting in Vancouver, University of Houston’s IP IL Annual Fall Lecture at the Four Seasons Hotel in Houston, and the annual Advanced Patent Law Institute.
Inequitable Conduct (Link to Case)- The district court and CAFC found Dr. Bernard Charles Sherman, founder and chairman of Apotex, guilty of inequitable conduct in his patenting of an antihypertensive claimed in 6,767,556. “Dr. Sherman breached his duty of candor, good faith, and honesty before the PTO.”
Google, Angelina Jolie, MediaTek: Intellectual Property – Google Inc. (GOOG) won its bid to overturn a $30.5 million patent-infringement verdict won by Vringo Inc. Angelina Jolie has responded to an appeal of a lower court ruling that her war film “In the Land of Blood and Honey” didn’t infringe the copyright of a Croatian journalist. Taiwan prosecutors questioned and then released on bail a former employee of MediaTek Inc., (2454) a semiconductor company based in Hsinchu, Taiwan.
Another Summer Without a USPTO Director – IP Watchdog reports that 11 weeks have elapsed since Senator Orrin Hatch wrote to the Executive branch expressing concern with the fact that the USPTO has been without a director for more than 16 months. After the nomination of Phil Johnson (of Johnson & Johnson) fell flat, the author questions whether there is any candidate capable of gathering the required support.
Collaborative Filtering (Link to Case) – I/P engine sued Google, Target, and Gannett (a media conglomerate) over 6,314,420 & continuation 6,775,664. On appeal, the CAFC panel majority agreed with Google that “as a matter of law [the claimed invention] simply combines content-based and collaborative filtering, two information filtering methods that were well-known in the art.”
Why Protecting Our Trade Secrets Is Essential To Saving the Economy – Six Congressmen author article outlining the importance of non-public intellectual property. They review a February 2013 report from the Executive Office of the President documenting the scope of trade secret theft.

August 18, 2014

All in the best possible taste – A comparative study of the current “Redskins” trademark controversy and other politically sensitive marks. Author finds that applications “sailing close to the boundaries of acceptability” will continue to be allowed.
Challenge could cancel Yamanaka iPS cell patent – A heated dispute has emerged in the stem cell field. The dispute turns on whether a new combinatorial approach to cell reprogramming will be considered obvious.
Can Insurance Coverage Provide Meaningful Protection from Patent Trolls and Other Infringement Claims? – Insurers continue to market policies that offer coverage for lawsuits brought by non-practicing entities, raising the question of whether policies that provide coverage for these lawsuits provide meaningful value to insureds.
Leaked EU trade pact suggests Canada caved on drug patents – A leaked copy of the Canada-EU free trade agreement posted online Wednesday reveals a so-called investor-state dispute settlement (ISDS) mechanism. Critics of the pact contend that it gives corporations too much power to sue governments, and that Canada caved on the issue of patent protection for drugs.
Deadline Approaches for Public Comments on Patent Term Adjustment – IP Watchdog surveys the USPTO’s proposed changes to the rules of patent term adjustment in light of the decision by the United States Court of Appeals for the Federal Circuit in Novartis AG v. Lee. The proposed changes provide that the time consumed by continued examination generally does not include the time after a notice of allowance.
An Empirical Study of Political Bias in Legal Scholarship – Law Professors Eric Posner and Adam Chilton have released a new article regarding political bias in legal scholarship. Their summarized finding: there is a positive correlation between a professor’s donation to a political party (Republican or Democrat) and that professor’s “scholarship ideology” (conservative or liberal).

August 15, 2014

Which is the CJEU copyright case to look most forward to? Probably Art & Allposters – Review of currently pending cases before Court of Justice of the European Union (CJEU), with subject matter including EU copyright, private copying levies, linking, jurisdiction in alleged online infringement cases, and resale royalty right.
Areas of Disuniformity in US Inventorship – PatentlyO article explores proportion of patents issued to U.S. Inventors by USPTO Workgroup. Author finds that about half of newly issued patents are non-US originated, and that highlights areas of technology where U.S. inventors continue to dominate the U.S. Patent market.
FDA Releases Another Prospective Guidance – The Food and Drug Administration recently issued a “guidance for Industry” entitled ” “Reference Product Exclusivity for Biological Products file under Section 351(a) of the PHS Act.” This Guidance provides some grounds for determining the term of market exclusivity under the BPCIA.
Why Do the U.S. Centers for Disease Control (CDC) Own a Patent on Ebola “Invention?” – The patented strain known as “EboBun” is not the same variant currently circulating in West Africa, but relates to the isolation and identification of a new virus species. Author questions political and medical rationale for developing the strain.
Canada’s Copyright Board Tariff 8 Decision Devalues Music as a Profession, Suggests Music is Worth 90% More in the U.S. – The Copyright Board of Canada issued its decision setting rate for Tariff 8 regarding non-interactive and semi-interactive webcasts. The royalty rates set by the decision are substantially than neighboring countries.
Levi Strauss, Zillow, Citadel: Intellectual Property – Levi Strauss defends three patent-infringement suits this month over a process for using lasers to mark textiles. Zillow loses its challenge to a trademark application filed by a mortgage brokerage, and a former Citadel LLC employee pleaded guilty to obstructing a probe into the theft of trade secrets from the Chicago-based investment firm.

August 14, 2014

Russian court hears VK.com piracy case – Record labels claim that file-sharing components of social network service VK.com provided “huge” library of copyright-infringing tracks. The case may signal closer legal scrutiny of Russia’s most popular social network.
Unincorporated Associations Have Capacity To Hold, Assert Federal Trademark Rights – The U.S. Court of Appeals for the Ninth Circuit ruled that a California darts league had the ability to sue and to assert trademark rights following a protracted dispute with an ex-member who had attempted to use its name. The court found that unincorporated associations could bring trademark claims pursuant to the Lanham Act.
Update: Judge Cancels NuVasive’s Trademark On The NeuroVision Name – A California judge granted a permanent injunction, canceling NuVasive’s claim to the trade name “NeuroVision.”
Patent Properties Announces Second Quarter 2014 Results – Intellectual property company offers unique licensing solution for patent owners and users. The Big Data-driven system has sparked sustained growth throughout the Second Quarter of 2014.
Google triumphs in ‘Glass’ UDRP – Google has successfully recovered a domain name (glassforsnap.com) registered four years after Google registered its “Glass” trademark in the US. The complaint was filed under the Uniform Domain Name Dispute Resolution Policy (UDRP). Panelist James Carmody handed Google the domain name after finding glassforsnap.com to be confusingly similar to Google’s “Glass” mark.
Humble-area Girl Scouts promote innovation, host intellectual property workshop – One of largest Girl Scout councils in the U.S. will host an Intellectual Property workshop on September 27, supported by a grant from a Dove Foundation Fund and the USPTO. The IP curriculum presented aims to teach girls the importance of intellectual property and innovation to the national economy.

August 13, 2014

Lanham Act “Use in Commerce” not a Requirement for Subject Matter Jurisdiction – On August 6, 2014, the Ninth Circuit held the “use in commerce” element for claims under Sections 32 and 43(a) of the Lanham Act is not a jurisdictional requirement capable of depriving a court of subject-matter jurisdiction. Rather, “use in commerce” is a requirement to establish a cause of action, which cannot be the basis for a jurisdictional dismissal.
Examination of Myriad-Mayo Guidance Comments — International Bioindustry Associations – The USPTO recently released a guidance memorandum regarding subject matter eligibility of claims reciting or involving law of nature, natural phenomena, and natural products. This article explores a number of excerpts from a recent forum wherein the guidance memorandum is examined by academics, companies and individuals.
A Guide for Small Business Owners: 5 Ways Your Business Could be Unintentionally Infringing On Intellectual Property – Article offers a layman’s perspective on the use of pictures without permission, the use of a business name similar to an existing trademark, the use of a song without permission, and other practical considerations facing small businesses in the information age.
Gambia: ‘Gov’t Committed to Intellectual Property Protection’ – Government of Gambia pledges renewed commitment to copyright protection in a series of seminars held by the African Regional Intellectual Property Organization (ARIPO. The series was established to promote the use of intellectual property in the ARIPO member states.
Achieving Broader Patent Scope in Asia – US Attorney/Agents often find Asian patent claims to be too narrow. Author Michael Lin offers an explanation based on differences in law and practice, and advises attorneys to always include backup positions which describe functional language in terms of steps and structure.

August 12, 2014

Business Workshop: New domains are trademark headaches – The organization controlling Internet names (ICANN) is making it more difficult for trademark owners to protect their brands online. Trademark owners should monitor news from ICANN closely, in addition to the announcement of new generic top-level domains.
What is reasonable and non-discriminatory (RAND) patent licensing? – Expanding use of “reasonable and non-discriminatory” (RAND) royalty rates for licensing U.S. patents unveils a number of different approaches to arriving at a RAND rate.
Royal Caribbean, ‘The Killing’: Intellectual Property – Federal judge awards reversal of $283 million patent verdict against Space Systems / Loral on basis of skeptical jury determination.
After Twitch’s Music Copyright Crackdown, What About Games Themselves? – An announcement this week reveals that videos with unlicensed music in the Twitch big media site will be flagged and partially muted. The move signifies a renewed effort by Gamecasting companies to balance the demand for user access to characters with strict licensing agreements.
Student Lawyers Get in on the Intellectual Property Boom- Passage of the America Invents Act, which encourages development of pro bono programs, has spurred the expansion of supervised student practice in IP law.
State of Vermont’s Demand Letter Case against MPHJ Continues – MPHJ has mailed out 15,000 demand letters to a wide range of scan-to-email businesses, prompting Vermont attorney general Bill Sorrell to dial up the pressure on MPHJ and other non-practicing entities in the state.

August 11, 2014

The Row Over Who Owns The Monkey Selfie Is Highlighting Big Problems With International Copyright – Photographer finds himself in battle with Wikimedia after rare black macaque monkey captures a “selfie” in North Sulawesi national park. The dispute hinges on a requirement under UK Copyright Law that a “person” author protected works, and raises the question of whether such a work might be considered “original.”
Back To The Mother Board: Federal Judge Throws Out $324M Google, Apple Settlement- Judge’s denial hinders efforts to end allegations that Steve Jobs and other tech executives suppressed software engineer pay by agreeing not to hire each other’s workers.
Supreme Court’s Rulings in Octane, Highmark Applied by Sixth Circuit- Dispute over scope of license agreement between manufacturers of balloon accessories is considered by Sixth Circuit. The Sixth Circuit quoted Highmark, reiterating that federal courts of appeals are to “apply an abuse-of-discretion standard in reviewing all aspects of a district court’s § 285 determination.”
Choosing Between Madrid Protocol and National Trademark Filings in the United States – A mark susceptible to refusal in the European Union as descriptive may achieve success with a national rather than Madrid Protocol filing. Recent article explores requirements for assignment of filings, amendments of marks, and renewal of international registration.
Tesla’s Patent Pledge: Is It Enough? – Elon Musk, co-founder and CEO of Tesla Motors, recently pledged that the company will not “initiate patent lawsuits against anyone who, in good faith, wants to use our technology.” An analysis of prior patent pledges suggests that future “good faith” users of Tesla technologies are still likely to be exposed to the risk of litigation.
Alibaba Cooperates With Kering After Fakes Suit Withdrawn – Claims alleging Alibaba violated trademarks are withdrawn following talks between the two companies. The outcome suggests that Alibaba, China’s biggest e-commerce company, is willing to cooperate with future counterfeiting investigations.